1. The right to a trade-mark is a property right or sold by the person whose mark it is, to the for the violation of which damages may be recov-exclusion of the use of that symbol by all other ered in an action at law, and the continued violation of it will be enjoined by a court of equity. This right was not created by Act of Congress, but has long been recognized by the common law.

2. The ordinary trade-mark has no necessary relation to invention or discovery. 3. At common law the exclusive right to it grows out of its use, and not its mere adoption. 4. The Acts of 1870 and of 1876 in regard to trade

marks are not valid and constitutional.

[Nos. 705, 711, 719.]

Argued Oct. 22, 1879. Decided Nov. 17, 1879.

persons, has been long recognized by the common law and the chancery courts of England of the States. It is a property right, for which and of this country, and by the statutes of some damages may be recovered in an action at law, and the violation of which will be enjoined by a court of equity, with compensation for past infringement. This property and the exclusive right to its use were not created by the Act of Congress, and do not now depend upon that Act for their enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to the Act of Congress, and remain in full force since its passage.

These propositions are so well understood as to need no citation of authorities or elaborate argument to prove them.

The property in trade-marks and the right

The cases are stated by the court. Mr. Chas. Devens, Atty-Gen., and Row-to their exclusive use resting on the laws of the land Cox, for United States, in No. 705.

Mr. Chas. Devens, Atty-Gen., and F. R. Coudert, for United States, in No. 711.

Mr. Chas. Devens, Atty-Gen., for United States, in No. 719.

Mr. Geo. Hoadly, for defendants, in No.

719.

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 trade mark legislation of Congress. The first two are in dictments 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 of trademarks founded on any rightful authority in the Constitution of the United States?

The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sections 77 to 84, inclusive, of the Act of July 8, 1870, 16 Stat. at L., 198, entitled "An Act to Revise, Consolidate and Amend the Statutes Relating to Patents and Copyrights." The part of this Act relating to trade marks is embodied in chap. 2, tit. 60, secs. 4937-4947, of the Revised Statutes.

States in the same manner that other property does, and depending, like the great body of the rights of person and of property, for their security and protection on those laws, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall depend, the period of their duration, and the legal remedies for their protection, if such power exist at all, must be found in some clause of the Constitution of the United States, the instrument which is the source of all the 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 that instrument, 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 section 8 of the first article of the Constitution. 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 It is sufficient at present to say that they pro-regulate the right of trade-marks is to be found vide for the registration, in the Patent Office, in the Act to which we have referred, entitled of any device in the nature of a trade-mark to "An Act to Revise, Consolidate and Amend which any person has, by usage, established an the Statutes Relating to Patents and Copyrights," exclusive right, or which the person so regis- terms which have long since become technical, tering intends to appropriate by that act to his as referring, the one to inventions and the other exclusive use; and they make the wrongful use to writings of authors, it is a reasonable inof a trade-mark, so registered, by any other per- ference that this part of the statute also was, son, without the owner's permission, a cause of in the opinion of Congress, an exercise of the action in a civil suit for damages. Six years power found in that clause of the Constitution. later we have the Act of August 14, 1876, 19 It may also be safely assumed that until a criticStat. at L., 141, punishing by fine and impris- al examination of the subject in the courts beonment the fraudulent use, sale and counter came necessary, it was mainly if not wholly feiting of trade-marks registered in pursuance to this clause that the advocates of the law of the statutes of the United States, on which looked for its support. 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

Any attempt, however, to identify the essential characteristics of a trade-mark with inven. tions and discoveries in the arts and sciences, or with the writings of authors, will show that

by the Constitution of the United States, because such instruments were a necessity to the transaction of commerce, and the duty was a tax upon exports.

the effort is surrounded with insurmountable | articles of commerce are kept for safety and by difficulties. which their contents are transferred from the The ordinary trade-mark has no necessary seller to the buyer, do not thereby become subrelation to invention or discovery. The trade- jects of congressional legislation more than mark recognized by the common law is gen- other property. Nathan v. Louisiana, 8 How.. erally the growth of a considerable period of 73. In the case of Paul v. Virginia, 8 Wall., 168 use, rather than a sudden invention. It is often [75 U.S., XIX., 357], this court held that a policy the result of accident rather than design, and of insurance made by a corporation of one State when under the Act of Congress it is sought to on property situated in another, was not an article establish it by registration, neither originality, of commerce, and did not come within the purinvention, discovery, science or art is in any view of the clause of the Constitution we are conway essential to the right conferred by that sidering. "They are not," says the court, “comAct. If we should endeavor to classify it,under modities to be shipped or forwarded from one the head of writings of authors, the objections State to another, and then put up for sale." On are equally strong. In this, as in regard to in- the other hand, in the case of Almy v. Califorventions, there is required originality. And while nia, 24 How., 169 [65 U. S., XVI., 644], it was the word writings may be liberally construed, held that a stamp duty imposed by the Legislaas it has been, to include original designs for ture of California on bills of lading for gold engravings, prints, etc., it is only such as are and silver transported from any place in that original, and are founded in the creative pow-State to another out of the State, was forbidden ers 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 trade-mark may be and, generally, is, the adoption of something already in The question, therefore, whether the tradeexistence as the distinctive symbol of the party mark bears such a relation to commerce in genusing it. At common law the exclusive right eral terms as to bring it within congressional to it grows out of the use of it, and not its mere control, when used or applied to the classes of adoption. By the Act of Congress this exclu- commerce which fall within that control, is one sive right attaches upon registration. But in which, in the present case, we propose to leave neither case does it depend upon novelty, upon undecided. We adopt this course because when invention, upon discovery, or upon any work this court is called on in the course of the adof the brain. It requires no fancy or imagina-ministration of the law to consider whether an tion, 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 trade-mark, 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 trade-marks, 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 invent-sider the vast amount of argument presented ors, and their writings and discoveries.

The other clause of the Constitution supposed to supply the requisite authority in Congress is the third of the same section, 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."

Act of Congress, or 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 con

to us assailing such statutes as unconstitutional, and 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 In

The argument is, that the use of a trade-mark -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 distin-dian Tribes; and while bearing in mind the guished is commerce; that the trade-mark is, therefore, a useful and valuable aid or instrument of commerce, and its regulation by virtue of the above provision of the Constitution belongs to Congress, and that the Act in question is a lawful exercise of this power.

It is not every species of property which is the subject of commerce, or which is used or even essential in commerce, which is brought by this clause of the Constitution within the control of Congress. The barrels and casks, the bottles and boxes in which alone certain

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

Congress to pass any laws necessary to carry | pany within the meaning of section 4703, of the such treaties into effect, untouched. Statutes of Michigan.

While we have, in our references in this opinion to the trade-mark legislation of Congress, had mainly in view the Act of 1870, and the civil remedy which that Act provided, 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 trade-marks which have been 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 80 certified to the proper Circuit Courts.

Copy, foregoing opinion duly authenticated by James H. McKenney, Esq., Clerk, Supreme Court, U.S.

Doyle v. Stevens, 4 Mich., 93.

3. As the conveyance of the staves in controversy from the Merritts to the Oil Company, was in the nature of a mortgage, and as there was no actual and continued change of possession of such staves, the conveyance was absolutely void as against creditors of the Merritts. Such is the language of the statute, and the courts have invariably construed the statute to mean just what its language imports.

This statute was taken from the statutes of New York, and has frequently been construed by the courts of New York.

Tyler v. Strang, 21 Barb., 198; Farmers' L. & T. Co. v. Hendrickson, 25 Barb., 484; Stevens v. R. R. Co., 31 Barb., 590.

Similar statutes have received similar construction.

Robinson v. Willoughby, 70 N. C., 358; Bevans v. Bolton, 31 Mo., 437.

4. Assuming that the agreement between the Merritts and the Oil Company operated as a sale, Cited-102 U. S., 544; 105 U. S., 312; 1 McCrary, 386- and not as a mortgage of the staves in controver

ALONZO S. HATCH, Piff. in Err.,

V.

sy, the title to the 50,000 staves, which the record shows were never piled upon the land covered by the lease from the Merritts to the Oil Company, had not vested in the Oil Company at the time they were seized by the plaintiff in

STANDARD OIL COMPANY OF CLEVE- error, under process against the Merritts.

LAND.

(See S. C., 10 Otto, 124-138.)

Sale of goods title, when passes-sale of staves. 1. A contract for the sale of specific, ascertained goods vests the property immediately in the buyer. and gives to the seller a right to the price, unless it is shown that such was not the intention of the parties.

2. Where there has been a complete delivery of the property, the title passes, although something remains to be done in order to ascertain the total

value of the goods at the rates specified in the con

tract.

3. A contract for the sale of staves to be made, piled and counted, held to pass the title to the vendee upon those things being done.

[No. 40.]

Submitted Nov. 3, 1879. Decided Nov. 17, 1879.

Estates for the Eastern District of Michigan.

RROR to the Circuit Court of the United

This was an action of replevin, brought in the court below by the Standard Oil Company, to recover a certain number of staves which it claimed to own and which the defendant, now plaintiff in error, had taken possession of as sheriff, under writs of execution against third parties.

Judgment was rendered for the plaintiff, and the defendant sued out this writ of error. The case is stated in the opinion. Messrs. Ashley Pond and H. Greer, for plaintiff in error:

1. The interest of the Standard Oil Company in the staves in controversy at the time they were seized by plaintiff in error upon process against the Merritts, was that of mortgagees, and the legal title as owners was in the Merritts.

2. Up to the time of the seizure of the staves in controversy by the plaintiff in error, there had been no delivery of them to the Oil Company, and no actual and continued change of possession from the Merritts to the Oil Com

Messrs. Moore, Canfield & Warner, for defendant in error:

In the case at bar, all the staves except some 50,000 had actually been delivered to the vendees upon their premises, which was the place agreed upon as the place of delivery; they had been counted; and the advance payment of more than $15,000 had actually been made before they were seized by the plaintiff in error. Both parties had acted according to contract.

As between them we submit it cannot be successfully contended that the title to the staves had not passed; and as no charge of fraud is made against either the Oil Company or the Merritts, the attaching creditors stand in no better position than the Merritts themselves.

We think our argument is abundantly sustained by the authorities of which we cite the

following:

Benj. Sales, sec. 311, and note G; 2 Schouler Pers. Prop., 221; Blackb. Sales, 147, 149; Lingham v. Eggleston, 27 Mich., 324; Whitcomb v. Whitney, 24 Mich., 486; Wilkinson v. Holiday, 33 Mich., 388; Ortman v. Green, 26 Mich., 209; Nat. Bank v. Crowley, 24 Mich., 494; Macomber v. Parker, 13 Pick., 175; Riddle v. Varnum, 20 Pick., 280; Williams v. Jackman, 16 Gray, 517; Foster v. Ropes, 111 Mass., 10; Morse v. Sherman, 106 Mass., 430; Marble v. Moore, 102 Mass., 443; Chapman v. Shepard,39 Conn., 413; Waldron v. Chase, 37 Me., 414; Fuller v. Bean, 34 N. H., 290; Crofoot v. Bennett, 2 N. Y., 258; Terry v. Wheeler, 25 N. Y., 520; Russell v. Car rington, 42 N. Y., 118; Burrows v. Whitaker, 71 N. Y., 291; Turley v. Bates, 2 Hurl. & C., 200; Armington v. Houston, 38 Vt., 448; Shelton v. Franklin, 68 Ill., 338; Graff v. Fitch, 58 III., 377; MacNamara v. Edmister. 11 Hun, 597; Young v. Matthews, L. R., 2 C. P., 127; Martineau v. Kitching, L. R., 7 Q. B., 436; Ogg v. Shuter, L. R., 10 C. P., 159; Rugg v. Minett, 11 East, 210; Benj. Sales, sec. 358; 2 Schouler

Pers. Prop., 248; Aldridge v. Johnson, 7 El. & Bl., 885; Brown v. Hare, 3 Hurls. & N., 483; Langton v. Higgins, 4 Hurls. & N., 400; Tregelles v. Sewell, 7 Hurls. & N., 573; Hyde v. Lathrop, 3 Keyes (N. Y.), 597; Bank v. Bangs, 102 Mass., 291; Groff v. Belche, 62 Mo., 400.

The provision in the contract for the ship ping and forwarding of the staves to Cleveland, and that there should be a final inspection there by the vendees, is not sufficient to prevent an immediate transfer, upon delivery at Lapeer. Nor does the clause in the contract respecting insurance and risk in case of destruction by fire.

There was no need of the stipulation that the risk or any part of the risk should be with the Merritts, after the staves were delivered at La peer, if it was not intended that the title should then pass to the Oil Company.

Martineau v. Kitching, L. R., 7 Q. B., 436; Elgee Cotton Cases, 22 Wall., 194 (89 U. S., XXII., 869).

The agreement between the Standard Oil Company and the Merritts has none of the necessary elements of a chattel mortgage.

1. In order to create a chattel mortgage, there must be a debt which one party has contracted, and which he is liable to pay. The mortgage is simply a security for such payment.

2. There must be a right of redemption upon payment of the debt.

Van Brunt v. Wakelee, 11 Mich., 177, and cases there cited; Cary v. Hewitt, 26 Mich., 228; 2 Story, Eq. Jur., secs. 1030, 1031.

Mr. Justice Clifford delivered the opinion of the court:

title to the same vested in the plaintiff Company as vendee, and in refusing to instruct the jury that the only interest the plaintiffs acquired in the staves before they were delivered was as security for advances in the nature of a mortgage interest. (2) That the court erred in refusing to instruct the jury that if there was no actual delivery of the property and change of possession the agreement of sale was void as against the creditors of the manufacturers, because not recorded as required by statute. (3) That the court erred in refusing to instruct the jury that if the evidence did not show that the fifty thousand staves not piled on the leased land were not counted, the title to that parcel did not pass to the plaintiffs for any purpose, and that the defendant, as to that parcel, was entitled to their verdict. (4) That the court erred in refusing to instruct the jury that under the agreement no title to any of the staves passed to the plaintiffs until they were actually placed upon the leased land and were counted by the designated person, and in instructing the jury that the title to the staves piled near the leased land passed to the plaintiffs. (5) That the court erred in refusing to instruct the jury that no title to any staves passed to the plaintiffs other than those contracted to be sold by the first agreement, and that if the jury find that there was any portion of the staves replevied not of that description, that as to such portion the plaintiffs are not entitled to recover. (6) That the court erred in excluding the testimony offered by the defendant, as set forth in the record.

Sufficient appears to show that the manufacturers of the staves, on the day alleged, conContracts for the purchase and sale of chat- tracted with the plaintiffs to sell them one miltels, if complete and unconditional and not lion of white-oak barrel staves of certain dewithin the Statute of Frauds, are sufficient, as scribed dimensions, to be delivered as therein between the parties, to vest the property in the provided, for the price of $30 per thousand, subpurchaser, even without delivery; the rule being ject to count and inspection by the plaintiffs, who that such a contract constitutes a sale of the agreed to receive and pay for the same as fast thing, and that its effect is, if not prejudicial to as inspected. But before the staves had been creditors, to transfer the property to the pur- furnished, to wit: on the 28th of August in the chaser against every person not holding the same same year, the parties entered into a new agree. under a bona fide title for a valuable considera- ment in regard to the staves, in which they retion without notice. The Sarah Ann, 2 Sumn., fer to the prior one, and stipulate that it is to 211; Gibson v. Stevens, 8 How., 384, 399; 2 continue in operation, subject to modifications Kent, Com., 12th ed., 493; Leonard v. Davis, 1 made in the new contract, of which the followBlack, 476-483 [66 U. S., XVII., 222-225]. ing are very material to the present investigation: (1) That the manufacturers shall make and deliver the staves properly piled in some convenient place, to be agreed between the parties, on land in Deerfield, to be controlled by the plaintiffs, and that the delivery shall be made as fast as the staves are sawed. (2) That the plaintiff shall furnish a man to count the staves from week to week as the same shall be piled. (3) That when the staves shall be so piled and counted, the person counting the same shall give the manufacturers a certificate of the amount, which, when presented to the plaintiffs, shall entitle the party to a payment of $17 per thousand as part of the purchase price. (4) That, upon the piling and counting of the staves as provided, "The delivery of the same shall be deemed complete, and that said staves shall then become and thenceforth be the property of the plaintiffs absolutely and unconditionally."

Nine hundred and forty-four thousand whiteoak barrel staves, of the value of $17,500, were attached by the defendant as sheriff of the county, under certain processes mesne and final, which he held for service against the manufacturers of the staves, to secure certain debts which they owed to their creditors. No irregularity in the proceedings is suggested, but the plaintiffs claimed to be the owners of the staves by purchase from the manufacturers, and they brought replevin to recover the property. Service was made, and the defendant appeared and demanded a trial of the matters set forth in the declaration. Issue having been joined between the parties, they went to trial, and the verdict and judgment were in favor of the plaintiffs. Exceptions were filed by the defendant, and he sued out the present writ of error.

Errors assigned in the court are as follows: (1) That the court erred in instructing the jury that, as soon as the staves were piled and counted, as provided in the second agreement, the

Other material modifications of the first agreement were made by the second, some of which