Allen v. Frances Riley

• Decision Date: 03 December 1906
• Docket Number: No. 99,99
• Citation: 27 S.Ct. 95,8 Ann. Cas. 137,51 L.Ed. 216,203 U.S. 347
• Parties: E. L. ALLEN, and Wallace B. Allen, Administrator of the Estate of Erasmus W. Allen, Deceased, Plffs. in Err., v. FRANCES J. RILEY
• Court: U.S. Supreme Court

203 U.S. 347

27 S.Ct. 95

51 L.Ed. 216

E. L. ALLEN, and Wallace B. Allen, Administrator of the Estate of Erasmus W. Allen, Deceased, Plffs. in Err.,

v FRANCES J. RILEY.

No. 99.

Submitted November 5, 6, 1906.

Decided December 3, 1906.

Frances J. Riley, the defendant in error, who was plaintiff below, recovered a judgment against plaintiffs in error, defendants below, for $1,250, in the district court of Brown county, in the state of Kansas, which judgment was affirmed by the supreme court of the state, and the defendants below have brought the case here by writ of error.

The suit was commenced by the filing of a petition by defendant in error, plaintiff below, in a district court of Kansas, March 17, 1902, to recover the value of certain lands alleged to have been transferred by the plaintiff to the defendant Erasmus W. Allen, in part payment for the transfer to plaintiff of rights for the state of Kentucky under a patent dated January 30, 1901, for a washing machine. The right to recover is based upon the failure of the defendants to comply with the Kansas statute, which failure defendants do not deny, but they insist that the statute is void as being in violation of the Constitution of the United States and the act of Congress referred to in the opinion. The Kansas statute is chapter 182 of the Laws of 1889. A copy of the act is set out in the margin.¹

Messrs. N. H. Loomis, R. W. Blair, and H. A. Scandrett for plaintiffs in error.

[Argument of Counsel from pages 348-350 intentionally omitted] Messrs. A. E. Crane and T. T. Woodburn for defendant in error.

[Argument of Counsel intentionally omitted] Mr. Justice Peckham, after making the foregoing statement, delivered the opinion of the court:

The sole question for our determination in this case is con- cerning the constitutionality of the Kansas act. The opinion of the supreme court of the state of Kansas is reported in 71 Kan. 378, 80 Pac. 952.

The judgment herein is founded upon Mason v. McLeod, 57 Kan. 105, 41 L.R.A. 548, 57 Am. St. Rep. 327, 45 Pac. 76; which case has been followed by that of Pinney v. First Nat. Bank, 68 Kan. 223, 75 Pac. 119.

The defendants insist that the act in question violates article 1, § 8, of the Con stitution of the United States, and the Federal statute passed in pursuance thereof, being Rev. Stat. § 4898, U. S. Comp. Stat. 1901, p. 3387. The Constitution grants to Congress the right '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;' and § 4898 of the Revised Statutes provides that every patent or interest therein shall be assignable in law by an instrument in writing, which assignment is made void against any subsequent purchaser or mortgagee, for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof.

It is asserted by the plaintiffs in error that the subject of the sale or assignment of the whole or any part of an interest in a patent is derived from the laws of Congress passed with reference to the constitutional provision quoted above, and that any regulations whatever, by any state authority, in regard to such assignment or sale, and making provision in respect to them, are illegal.

The supreme court of Kansas has maintained and upheld the Kansas act on the ground that the statute is simply a reasonable and proper exercise of the police power of the state in regard to the subject of the act. Mason v. McLeod, supra. That court was of opinion that the provisions of the Kansas statute did not trench upon the Federal power nor interfere with the rights secured to patentees by Federal law. The opinion does not assert that a state statute can interfere with the right of a patentee to sell or assign his patent, nor that it can take away any essential feature of his exclusive right, but as is stated, the provisions in the act have no such purpose or effect; that 'they are in the nature of police regulations designed for the protection of the people against imposition and fraud. There is great opportunity for imposition and fraud in the transfer of intangible property, such as exists in a patent right, and many states have prescribed regulations for the transfer of such property differing essentially from those which control the transfer of other property.' Many authorities are cited, and the opinion then continues: 'The doctrine of these cases is that the patent laws do not prevent the state from enacting police regulations for the protection and security of its citizens, and that regulations like ours, which are mainly designed to protect the people from imposition by those who have actually no authority to sell patent rights or own patent rights to sell, should be upheld. We think the statute is vaild.'

In Indiana a statute which is like that in Kansas has been upheld by the supreme court of that state. Brechbill v. Randall, 102 Ind. 528, 52 Am. Rep. 695, 1 N. E. 362. That case has, since that time, been followed in Indiana. New v. Walker, 108 Ind. 365, 58 Am. Rep. 40, 9 N. E. 386. In Ohio a statute somewhat similar to the one in question has been upheld. Tod v. Wick Bros. 36 Ohio St. 370. And the same result has been reached in Pennsylvania. Haskell v. Jones, 86 Pa. 173. In Herdic v. Roessler, 109 N. Y. 127, 16 N. E. 198, the validity of the same kind of a statute has been upheld. See also Wyatt v. Wallace, 67 Ark. 575, 55 S. W. 1105; State v. Cook, 107 Tenn. 499, 62 L.R.A. 174, 64 S. W. 720. The statutes in the different states are not all precisely like the Kansas law, but they make provisions in regard to the sale or assignment of rights under a patent, and sometimes in regard to notes given for their purchase, which cannot be upheld under the contention of plaintiffs in error herein, that all such provisions are in violation of, or inconsistent with, the laws of Congress on the subject. The courts of some other states, having like questions before them, have held their statutes void. Hollida v. Hunt, 70 Ill. 109, 22 Am. Rep. 63; Cranson v. Smith, 37 Mich. 309, 26 Am. Rep. 514; Wilch v. Phelps, 14 Neb. 134, 15 N. W. 361; State v. Lockwood, 43 Wis. 405, and some others.

The circuit court of appeals of the eighth circuit, in Ozan Lumber Co. v. Union County Nat. Bank, 145 Fed. 344, has held a statute of Arkansas upon this same subject void because of its discrimination between articles of property of the same class or character, based only on the fact that the property discriminated against was protected by a patent granted by the United States. In the opinion in the case, authorities upon the subject are cited and commented upon. Among the cases cited are Patterson v. Kentucky, 97 U. S. 501, 24 L. ed. 1115, and Webber v. Virginia, 103 U. S. 344, 26 L. ed. 565.

In Patterson v. Kentucky, supra, the owner of a patent right for an improved burning oil was convicted of the violation of a Kentucky statute by the sale of the oil covered by the patent. The owner claimed the right to sell such oil notwithstanding the statute, which provided a standard below which oil was regarded as dangerous for illuminating purposes, and the sale of which was prohibited. It was admitted the patented oil did not come up to the state standard. This court held the conviction was right, and that the owner of the patent was not protected, by reason of his ownership, from liability under the state statute. That statute was held to be one passed in the legitimate exercise of the powers of the state over its purely domestic affairs, and it was said that it did not violate either the Constitution or laws of the United States, as, when property protected by patent once comes into existence, its use is subject to the control of the several states to the same extent as any other species of property.

Webber v. Virginia, supra, relates also to tangible property covered by a patent, and it was held that the patent did not exclude from the operation of the taxing or licensing law of the state the tangible property manufactured under a patent. It was said in that case that 'Congress never intended that the patent laws should displace the police powers of the states, meaning by that term those powers by which the health, good order, peace, and general welfare of the community are promoted. Whatever rights are secured to the inventors must be enjoyed in subordination to this general authority of the state over all property...