licensor, who should be reinvested in the same manner as if the license had not been made. The notes were not paid. The licenses in the present case contain provisions that the licensees shall pay certain tariffs, and keep correct accounts, and permit their books to be inspected at all reasonable hours; and the complaint is that the defendants have not paid the tariffs, and have not kept true accounts, and have not permitted their books to be examined. There is no express provision in their licenses that, if they do not keep their covenants, the rights granted by the licenses shall revert to the licensor. The court, in the case in 10 Howard, say: "The dispute in this case does not arise under any act of congress, nor does the decision depend upon the construction of any law in relation to patents. It arises out of the contract stated in the bill; and there is no act of congress providing for or regulating contracts of this kind. The rights of the parties depend altogether upon common law and equity principles."

In the case of Hartshorn v. Day, 19 How., 211 (CONTRACTS, §§ 1585–88), the court, in commenting on the effect upon a license of the non-performance, by the licensee of a patent-right, of covenants made by him, say: "The payment of the annuity" (covenanted to be paid)" was not a condition to the vesting of the interest in the patent in Judson, and, of course, the omission or refusal to pay did not give to Chaffee" (the patentee) "a right to rescind the contract, nor have the effect to remit him to his interest as patentee." "The remedy for the breach could rest only upon the personal obligation" of the covenantor. The weight of authority, therefore, in the federal courts is clearly that this court has no jurisdiction of the case now under consideration.

The decisions of state courts sustain these views. The jurisdiction of the circuit courts in cases arising under the patent laws, without regard to the citizenship of the parties or the amount in controversy, is exclusive. Curtis on Patents, sec. 496. State courts have no jurisdiction to entertain a suit, either in law or equity, where the gravamen laid is the infringement of patent-rights. Dudley v. Mayhew, 3 Comst., 9. But in the case of Rich v. Atwater, 16 Conn., 409, which was a bill to enforce, by injunction, the rights of the plaintiff under a special agreement made upon a license given to the defendant to use the patented invention, it was held that the court had jurisdiction; that such a suit was not a suit which, by the patent law, belonged to the federal courts; and that the gravamen was the breach of a contract. The gravamen in this case is the breach of a contract. Without such breach there would be no pretense of the violation of any of the plaintiffs' rights. Jurisdiction is not given to the circuit court by the patent act of all suits where patent-rights are the subject of inquiry. An action for fraud in the sale of a patent-right is cognizable by the state courts. Cognizance of such an action is not given to the circuit court by the patent act. Peck v. Bacon, 18 Conn., 377.

With this view of this question, the motion must be denied for want of jurisdiction.

DUWELL v. BOHMER.

(Circuit Court for Ohio: 2 Flippin, 168–176. 1878.)

STATEMENT OF FACTS.- Bill to restrain the infringement of a trade-mark, alleged to have been registered in accordance with the act of congress of July 8, 1870.

Opinion by SWING, J.

The demurrer is that this court has no jurisdiction of the case.

81541. The United States circuit court has jurisdiction in equity to restrain infringement of trade-marks duly registered, without reference to the citizenship of the parties.

The ground of the demurrer is that the parties are both residents of the state of Ohio, and that there is no act which confers upon the United States courts jurisdiction of the subject-matter in such a case. The act of 1870 (R. S., sec. 629, p. 111) gives the circuit court jurisdiction of all suits under the copyright and patent laws. If the trade-mark law is in any fair sense a copyright law, the act gives jurisdiction. The only provision of the constitution which in any wise bears on the power of congress to pass laws respecting trademarks, or to protect them, is the following, viz.: Section 8 of article 1 of the constitution of the United States. "The 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 writing and discoveries." "Also to make all laws which shall be necessary and proper for carrying into execution the foregoing powers."

There is no other clause of the constitution which vests in congress the power to grant to authors an exclusive right to their writings, and congress in legislating on this question undoubtedly drew their power from this section. The copyright and trade-mark laws all come from the same source. So if the trademark act of 1870 be a copyright law, then the court has jurisdiction without reference to residence or the amount in controversy. The clause or words in section 4942 of the copyright and trade-mark law, viz.: "Shall be liable to an action on the case for damages for such wrongful use of such trade-mark, at the suit of the owner thereof; and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of his trade-mark and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful use," does not limit this jurisdiction.

But there may be a general extending of the right to sue; that is, where there is a general jurisdiction in the courts of the United States you may go into any state court. This section 4942 may be an enlargement, but is not a limitation, of the jurisdiction. But aside from this act, section 1, chapter 137, of the act of March 3, 1875, provides: "That the circuit courts of the United States shall have original cognizance, concurrent with the courts of the several states, of all suits of a civil nature at common law or in equity, where the matter in dispute exceeds, exclusive of costs, the sum or value of $500, and arising under the constitution or laws of the United States," etc. The clause granting jurisdiction is without limitation as to residence. It only limits the amount in controversy. The remaining clauses are wholly disjunctive.

The first three clauses are without qualification as to citizenship. Then follows the clause when there shall be controversies of citizens of different states. In the present case the right is derived exclusively from a law of the United States. In this statute no citizenship is requisite, and if, in this case, it is a suit of a civil nature at common law or in equity, the jurisdiction vests in the circuit court, whenever the amount in controversy is over $500. If the suit arises under the constitution or a law of the United States, the jurisdiction is then vested without respect to the amount.

The authorities upon the question at issue are very limited, and not a single case, in which the question has been raised, has been cited by counsel. The point at issue is argued for the first time de novo. It has been ably argued.

I have looked into every book and in all reported decisions, and have been unable to find anything in which the question has been determined.

In Bump's Treatise, Law of Patents, Trade-marks and Copyrights, it seems to be taken for granted that the circuit court has jurisdiction. I find that in the index, under the head of circuit courts, is "Original jurisdiction in patent cases, page 13," "in copyright cases 13," "in trade-mark cases 13," "without regard to citizenship, page 13." And he has classed it there without regard to citizenship. Turn to the pages referred to in the index, and we find a copy of the trade-mark act. Turn to page 349 — where he speaks of the jurisdiction — he simply copies section 4942 of the act.

When we go back to his index and look under the head of "Trade-marks," we find "Remedy in State Courts Preserved." See page 250, on which page he quotes section 4945 of the statute of 1870 (R. S., ch. 2). Now, if we examine that section, we find that it provides again: "Nothing in this chapter shall prevent, lessen, impeach or avoid any remedy at law or in equity, which any party aggrieved by any wrongful use of any trade-mark might have had if the provisions of this chapter had not been enacted." So it is clear that he regards the jurisdiction which the circuit court has additional to that possessed by the state courts, and that the circuit court has jurisdiction without reference to the residence of the parties or the amount in controversy. When we come to look at the trade-mark law (R. S., title 60, page 953), we find that the title thereof is "Patents, Trade-marks and Copyrights." And then follows: "Chapter One, Patents;" "Chapter Two, Trade-marks; " "Chapter Three, Copyrights;" and the sections are numbered continuously from the beginning of chapter 1, through chapters 2 and 3. The demurrer is overruled.

§ 1542. Injunction against infringement. The circuit court has jurisdiction to issue an injunction to restrain the infringement of letters patent at the suit of a foreign administrator of the original patentee. Smith v. Mercer,* 5 Penn. L. J., 533.

§ 1543. Enjoining representation of scene in play. Under the act of August 18, 1856, this court has authority to enjoin the representation or sale of a certain scene in a play which is a substantial reproduction of a material scene in the plaintiff's play. Daly v. Palmer, 6 Blatch., 256.

§ 1544. Enjoining use of machine in another state. In a suit in New York to restrain the unlawful use of a patented machine in Vermont, the court held that the proceedings for the purpose of restraining such use being instituted against the owner or party concerned in the infringement, it was sufficient if the court had jurisdiction of the person of the defendant. Wilson v. Sherman, 1 Blatch., 536.

§ 1545. Injunction under act of 1800.- Under the act of 1800, and previous to that of February 15, 1819, the only remedy given by congress to a patentee whose rights were infringed was an action at law to recover threefold damages; a suit in equity for an injunction would not lie in the circuit court between citizens of the same state. Livingston v. Van Ingen, 1 Paine, 45.

§ 1546. Quære: Whether such an action would lie as ancillary to and in defense of an action at law. Ibid.

§ 1547. Relief independent of injunction.—The seventeenth section of the patent act of July 4, 1836 (5 U. S. Stats. at Large, 124), confers jurisdiction in equity upon the circuit courts, irrespective of the right of the patentee to an injunction or his demand for one. Hence this court has jurisdiction of a bill in equity against infringers praying for a discovery and account, although the period of the patentee's grant has expired, and he is no longer entitled to an injunction. Nevins v. Johnson, 3 Blatch., 80.

§ 1548. Proceeding against machine itself. It seems that when it is necessary to proceed against the machine itself, as in extreme cases of contumacy, or fraudulent contrivance to evade an injunction, the proceedings must be in the district where the machine is located. Wilson v. Sherman, 1 Blatch., 536.

§ 1549. Specific performance.-— A suit for the specific performance of a contract for the sale of a patent-right is not a suit arising under the patent laws, within the jurisdiction of the circuit courts. Burr v. Gregory,* 2 Paine, 426; Brooks v. Stolley, 3 McL., 523.

§ 1550. A bill seeking to subject a patent-right to a judgment in favor of complainant is not a case arising under the patent laws. Ryan v. Lee,* 10 Fed. R., 917.

§ 1551. Residence of parties.- In patent causes the jurisdiction of the federal courts is not dependent on the residence of the parties, except that the defendant must reside or be found in the district in which suit is brought. Blunt v. Allen,* 8 N. Y. Leg. Obs., 107; Brooks v. Stolley, 3 McL., 523.

§ 1552. The jurisdiction of the circuit court of the United States in patent cases extends to cases where all the parties are citizens of the same state. Evans v. Eaton, 3 Wheat., 518. $1553. The circuit court of the United States has jurisdiction of a suit in equity brought by the assignee of a patent, against the patentee, to restrain infringement, although all the parties are citizens of the same state. Littlefield v. Perry, 21 Wall., 218.

§ 1554. Service.— All suits arising under patent-rights are within the jurisdiction of the circuit court of the United States, but the suit must be brought in the circuit court for that district where the defendant resides, or is served personally with process; and this fact of personal service within the district of the court should appear plainly on the record. Allen v. Blunt, 1 Blatch., 483.

$ 1555. Prior suit at law unnecessary.- The United States circuit court has jurisdiction in equity of cases for infringement of patents, without previously sending the parties to try the patent at law. Ordering a law trial is discretionary with the court and does not affect its jurisdiction. The supreme court of the District of Columbia has the same powers. Cochrane v. Deener, 4 Otto, 782.

§ 1556. The circuit courts of the United States have jurisdiction of controversies arising under the patent laws by direct grant from congress. They do not act merely as ancillary to courts of law, and, therefore, do not require the patentee to establish his legal right in a court of law and by the verdict of a jury. Sanders v. Logan,* 2 Pittsb. R., 244.

§ 1557. Declaring patent void — Rights arising exclusively under license. On a bill in equity by licensees to have the defendants enjoined from commencing any suit on the license or alienating the license pending this action; to have the patents declared void for want of novelty; and the license canceled and the tariffs paid by the plaintiffs returned, held, that this court had no jurisdiction of a suit to declare a patent void, except under the sixteenth section of the act of July 4, 1836 (5 U. S. Stat. at L., 123), and the tenth section of the act of March 3, 1859 (id., 354), in the cases therein specially provided, under none of which this suit came. And that this court did not have jurisdiction of this suit by virtue of section 17, act of July 4, 1836, because the rights of the defendant, by virtue of the license, arose out of the license, and not, in any proper or legal sense, out of or under the patents or the law under which they were granted. Merserole v. Union Paper Collar Co., 6 Blatch., 356.

§ 1558. Construction of contract between author and publisher.- The United States circuit court has no jurisdiction of a case involving solely the construction of a contract between author and publisher, and not in any way touching the validity of a copyright. Pulte v. Derby, 5 McL., 336.

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§ 1559. Contract not raising any question under the patent laws. Whenever a contract is made in relation to patent-rights which is not provided for and regulated by an act of congress, the parties, if any dispute arises, stand upon the same grounds as other litigants in respect to the jurisdiction of the court. Hence when the matter in dispute was whether the complainant in a bill in equity was entitled to an extra half cent for the use of his patents under a license, express or implied; and it appeared that the decision did not depend in any way upon the construction of any law of congress relating to patents, and it also appeared that the parties were citizens of the same state, the court held that it did not have jurisdiction of the suit. Blanchard v. Sprague, 1 Cliff., 288.

§ 1560. After sale of patented article. The right of property to a patented machine after it has been sold by the maker to another is not protected by the laws of the United States, but by the state laws, and it is to them the owner must look if he wishes his rights to be protected. Bloomer v. McQuewan, 14 How., 550.

§ 1561. Remedy after expiration.— A bill in equity for the infringement of a patent will not lie after the patent has expired, if it asks only for damages for the infringement, for the remedy is complete at law; but if it asks for a discovery, and such an account as is the proper subject of a suit in equity, the circuit court will take jurisdiction. Vaughan v. East Tenn., Virg. & Ga. R. Co., 1 Flip., 621.

§ 1562. Assignees of inventors.- Although inventors only are named in the act of 1836, section 17, giving jurisdiction to the circuit courts in patent cases, no doubt can be entertained that the act extends to and includes the assignees of such inventors. Jenkins v. Greenwald, 1 Bond, 126.

§ 1563. Assignment of right to sue for infringement.- The profits recoverable in an action for the violation of an exclusive right under a patent are not regarded in the light of

unliquidated damages, and an assignment which transfers to the complainant the right to sue for infringements of the patent is not void. Ibid.

§ 1564. Extension procured by fraud. So long as an act extending a patent exists in the statute book, this court will regard it as the law of the land, and as governing, so far as it applies, the rights of the parties, although it may have been obtained by fraud and misrepresentation. Gibson v. Gifford, 1 Blatch., 529.

§ 1565. Unpublished play written by non-resident alien and purchased by resident alien. The acts of congress in regard to copyright do not extend to the case of an unpublished play, written by a non-resident alien, and purchased by a resident alien. The parties to the suit, however, being proper parties to bring the case within the jurisdiction of the court, the court retained jurisdiction of a bill to enjoin the representation of the play, by virtue of their general equity jurisdiction. Keene v. Wheatley,* 9 Am. L. Reg., 44.

5. Internal Revenue.

SUMMARY — Jurisdiction lost by act of 1866, § 1566.— Remedy against collector, §§ 1567, 1569.— Remedy against assessor, § 1568.— Jurisdiction in removed suits, § 1570.— No jurisdiction to enjoin collection of illegal tax, § 1571.—Jurisdiction under act of 1833 to enjoin collection of illegal tax, § 1572.

§ 1566. Under the statute of 1864, the circuit courts had original jurisdiction of internal revenue suits between citizens of the same state; but the repeal of that statute in 1866 took away this jurisdiction, and cases pending under it at the time of the repeal, fell. Insurance Co. v. Ritchie, §§ 1573-74.

§ 1567. An action of assumpsit may be maintained against a collector to recover taxes illegally assessed and paid under due protest. Assessor v. Osbornes, §§ 1575-80.

§ 1568. Semble, that an assessor, though perhaps liable in some cases for an illegal assessment, is not liable in assumpsit for taxes paid the collector. Ibid.

$ 1569. Under the acts of 1833 and 1864, a suit might be maintained in the circuit court between citizens of the same state to recover internal revenue duties illegally assessed, but this right is taken away even in suits then pending by the act of July 30, 1866. Ibid.

§ 1570. Although the circuit court is without original jurisdiction of these suits, it could take cognizance of them if removed by defendants from a state court. Ibid.

§ 1571. The circuit court has no power to enjoin the collection of an illegal income tax, either under the constitution defining the judicial power of the United States, because this provision has not been put in force by legislation, or under the general equity powers of the court. Roback v. Taylor, §§ 1581-84.

§ 1572. Under the act of March 2, 1833, the circuit court has power to enjoin the collection of an illegal tax. Georgia v. Atkins, §§ 1585-86. [NOTES.-See §§ 1587-1589.]

INSURANCE COMPANY v. RITCHIE.

(5 Wallace, 541-545. 1866.)

APPEAL from U. S. Circuit Court, District of Maryland.
Opinion by CHASE, C. J.

STATEMENT OF FACTS.- We meet upon the threshold of this cause a question of jurisdiction. The record discloses a suit in equity by the Merchants' Insurance Company, a corporation under the laws of Massachusetts having its place of business in the city of Boston, against James Ritchie and E. L. Pierce, assessor and collector of internal revenue in the third collection district of that commonwealth. The corporation constructively (Louisville R. Co. v. Letson, 2 How., 554 (§§ 1346-50, supra); Marshall v. Baltimore & Ohio R. Co., 16 id., 314 (CONTRACTS, $$ 555-62), and Ritchie and Pierce actually, are citizens of Massachusetts. And the question is, Whether this suit, as a revenue case, can be maintained by a citizen of Massachusetts against citizens of the same state? $ 1573. The statutes relating to revenue suits.

The judiciary act of 1789 limited the jurisdiction of national courts, so far as determined by citizenship, to "suits between a citizen of the state in which