In re Keasbey & Mattison Co. riginal

• Decision Date: 16 December 1895
• Docket Number: O,No. 6,6
• Citation: 40 L.Ed. 402,16 S.Ct. 273,160 U.S. 221
• Parties: In re KEASBEY & MATTISON CO. riginal
• Court: U.S. Supreme Court

160 U.S. 221

16 S.Ct. 273

40 L.Ed. 402

In re KEASBEY & MATTISON CO.

No. 6, Original.

December 16, 1895.

This was a petition for a writ of mandamus to the judges of the circuit court of the United States for the Southern district of New York, to command them to take jurisdiction and proceed against the E. L. Patch Company upon a bill in equity, filed in that court on January 26, 1895, by the petitioner, described in the bill as a corporation organized and existing under the laws of the state of Pennsylvania, against the E. L. Patch Company, alleged in the bill to be a corporation organized and existing under the laws of the state of Massachusetts, and having its principal office and place of business in the city and state of New York, and against Henry E. C. Kuehne and Edward H. Lubbers, alleged to be citizens of the United States and of the state of New York, and managing or general agents of the E. L. Patch Company in that state, for infringement of a trade-mark, owned by the petitioner, registered in the patent office under the laws of the United States, and used in commerce between the United States and several foreign nations, named in the bill; and alleging that 'this is a suit of a civil nature in equity, where the matter in dispute exceeds, exclusive of interest and costs, the sum or value of two thousand dollars, and arising under the laws of the United States, and also in which there is a controversy between citizens of different states, within the intent and meaning of the statute in such case made and provided.'

Upon the filing of the bill in equity, a subpoena addressed to all the defendants was issued, and was served in the city of New York upon the E. L. Patch Company by exhibiting the original and delivering a copy to Kuehne, one of its managing agents in the district, and was also served upon Kuehne and Lubbers individually.

Upon the return of the subpoena, the E. L. Patch Company, by its solicitor, appearing specially for this purpose, moved to set aside the alleged service of the subpoena upon the company; and the circuit court, upon a hearing, ordered that the motion be granted, and that service set aside as null and void, and the company relieved from appearing to plead or answer to the bill.

Edward K. Jones, for petitioner.

[Argument of Counsel from pages 222-225 intentionally omitted] Wm. A. Abbott, for respondent.

Mr. Justice GRAY, after stating the case, delivered the opinion of the court.

This case presents a single question of jurisdiction of the circuit court of the United States, and involves no consideration of the merits of the cause of action asserted in the bill filed in that court.

By the act of March 3, 1881, c. 138, 'owners of trade-marks used in commerce with foreign nations, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign county or tribe which by treaty, convention or law affords similar privileges to citizens of the United States, may obtain registration of such trade-marks' by causing to be recorded in the patent office a statement and description thereof, and complying with other requirements of the act. 21 Stat. 502.

By section 7 of that act, 'any person who shall reproduce, counterfeit, copy, or colorably imitate any trade-mark registered under this act, and affix the same to merchandise of substantially the same descriptive properties as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said 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 such trademark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases, without regard to the amount in controversy.'

By section 11, nothing in this act shall be construed 'to give cognizance to any court of the United States in an action or suit between citizens of the same state, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe.'

While section 7 provides that 'courts of the United States shall have original and appellate jurisdiction in such cases, without regard to the amount in controversy,' and while the provision of section 11, that nothing in the act shall be construed to give 'cognizance to any court of the United States in an action or suit between citizens of the same state,' unless the trade-mark is used in commerce with a foreign country or an Indian tribe, implies that a suit for infringement of a trade-mark used in such commerce may be maintained in some court of the United States, yet neither of those sections, and no other provision of the act, specifies in what court of the United States, or in what district, suits under the act may be brought; but the jurisdiction of such suits, in these respects, is left to be ascertained from the acts regulating the jurisdiction of the courts of the United States.

At the time of the passage of the trade-mark act of 1881, the only act to which reference could be had to ascertain such jurisdiction was the judiciary act of March 3, 1875, c. 137, § 1, providing 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 five hundred dollars, and arising under the constitution or laws of the United States, or treaties made, or which shall be made, under their authority,' issued, and was served in the city of New between citizens of different states,' 'or a controversy between citizens of a state and foreign states, citizens or subjects.' 'But no person shall be arrested in one district for trial in another in any civil action before a circuit or district court. And no civil suit shall be brought before either of said courts against any person, by any original process or proceeding, in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving such process or commencing such proceeding,' except in certain cases, not material to the present inquiry. 18 Stat. 470.

The restriction of jurisdiction with respect to amount, in the act of 1875, was perhaps superseded, as to trade-mark cases, by the express provision...