International Postal Supply Company of New York v. Dwight Bruce

• Decision Date: 31 May 1904
• Docket Number: No. 215,215
• Citation: 24 S.Ct. 820,48 L.Ed. 1134,194 U.S. 601
• Parties: INTERNATIONAL POSTAL SUPPLY COMPANY OF NEW YORK v. DWIGHT H. BRUCE
• Court: U.S. Supreme Court

194 U.S. 601

24 S.Ct. 820

48 L.Ed. 1134

INTERNATIONAL POSTAL SUPPLY COMPANY OF NEW YORK

v DWIGHT H. BRUCE.

No. 215.

Argued April 13, 14, 1904.

Decided May 31, 1904.

This case came before the court on the following certificate for instructions:

'The complainant, as the owner of letters patent of the United States for new and useful improvements in stamp canceling and postmarking machines, brought a bill in equity against the defendant, who is postmaster of the United States postoffice at Syracuse, New York, complaining of the use in said postoffice of two machines which infringe the complainant's letters patent, and praying for an injunction against the further use of said machines. The defendant never personally used any stamp canceling and postmarking machines, but the use of said two machines in said postoffice at Syracuse is by some of defendant's subordinates, who are employees of the United States government, such use being in the service of the United States.

'The machines so used were hired by the United States Postoffice Department for a term, which is, as yet, unexpired,

from the manufacturer and owner of said machines, at an agreed rental, which is payable on the order of the Postoffice Department, by whose orders said machines were placed in the Syracuse postoffice, and were and are now used there.

'And the said United States circuit court of appeals for the second circuit further certifies that, to the end that it may properly decide the questions in such cause, and presented in the assignments of error therein filed, it requires the instructions of the Supreme Court of the United States on the following question, to wit:

'Upon the foregoing facts, has the United States circuit court the power to grant an injunction against the defendant, restraining the use of the machines?'

Messrs. Louis Marshall and George W. Hey for the

International Postal Supply Company.

[Argument of Counsel from pages 602-604 intentionally omitted] Mr. William K. Richardson and Assistant Attorney General McReynolds for bruce.

Statement by Mr. Justice Holmes:

Mr. Justice Holmes delivered the opinion of the court:

This case is governed by Belknap v. Schild, 161 U. S. 10, 40 L. ed. 599, 16 Sup. Ct. Rep. 443. There an injunction was sought against the commandant of the United States navy yard at Mare island, California, and some of his subordinates, to prevent the use of a caisson gate in the dry dock at that place, contrary to the rights of the plaintiff, as patentee. The case was heard on pleas setting up that the caisson gate was made and used by the United States for public purposes, and, as they were construed, that it was the property of the United States. The pleas were held bad as answers to the whole bill, because the bill also sought damages, and the defendants might be personally liable, but it was held that an injunction could not be granted, and the bill was dismissed, without prejudice to an action at law. Vavasseur v. Krupp, L. R. 9 Ch. Div. 351, was cited for the proposition which was made the turning point of the case, that the court could not interfere with an object of property unless it had before it the person entitled to the thing, and this proposition was held to extend to an injunction against the use of the thing as well as to a destruction of it or to a removal of the part which infringed. It was pointed out that the defendants had no personal interest in the continuance of the use, and that, so far as the injunction was concerned, the suit really was against the United States. Of course, if those defendants were enjoined, other persons attempting to use the caisson gate would be, and thus the injunction practically would work a prohibition against its use by the United States.

Belknap v. Schild differed from United States v. Lee, 106 U. S. 196, 27 L. ed. 171, 1 Sup. Ct. Rep. 240, and Tindal v. Wesley, 167 U. S. 204, 42 L. ed. 137, 17 Sup. Ct. Rep. 770, and also from American School of Magnetic Healing v. McAnnulty, 187 U. S. 94, 47 L. ed. 90, 23 Sup. Ct. Rep. 33, relied on by the appellant, in the fact, among others, that the title of the United States to the caisson gate was admitted, and therefore the United States was a necessary party to a suit which was intended to deprive it of the incident of title,—the right to use the gate. As the United States could not be made a party, the suit failed. In the case at bar the United States is not the owner of the machines, it is true, but it is a lessee in possession, for a term which has not expired. It has a property,—a right in rem,—in the machines, which, though less extensive than absolute ownership, has the same incident of a right to use them while it lasts. This right cannot be interfered with behind its back; and, as it cannot be made a party, this suit, like that of Belknap v. Schild, must fail. The answer to the question certified must be 'No.' Whether or not a renewal of the lease could be enjoined is not before us.

The question is answered in the negative, and it will be so certified.

Mr. Justice Harlan, dissenting:

It is to be assumed upon this record that the plaintiff, the International Postal Supply Company, is the owner of letters patent granted by the United States for new and useful improvements in stamp canceling and postmarking machines; and that the defendant, Bruce, against the will of the patentee, and without paying any royalty to him, is using, and, unless enjoined, will continue to use, machines that infringe the plaintiff's letters patent.

Can the defendant be prevented from thus violating rights of the plaintiff in respect of his patent, the validity of which is not here disputed? In answering this question it is necessary to bring together the observations of this court in some cases heretofore decided. That being done, but little additional need be said.

In James v. Campbell, 104 U. S. 356, 357, 26 L. ed 786, 787, this court, speaking by Mr. Justice Bradley, said: 'That the government of the United States, when it grants letters patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use, without compensation, land which has been patented to a private purchaser, we have no doubt. The Constitution gives to Congress 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 writings and discoveries,' which could not be effected if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams, and submarine batteries, to be attached to armed vessels. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments. It has been the general practice, when inventions have been made which are desirable for government use, either for the government to purchase them from the inventors, and use them as secrets of the proper department; or, if a patent is granted, to pay the patentee a fair compensation for their use. The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.' Observe, that the court said that, without compensation to the patentee, the government could not appropriate or use his invention.

These views were reaffirmed by the unanimous judgment of this court in United States v. Palmer, 128 U. S. 262, 272, 32 L. ed. 442, 445, 9 Sup. Ct. Rep. 104. And as late as Belknap v. Schild, 161 U. S. 10, 16, 40 L. ed. 599, 601, 16 Sup. Ct. Rep. 443, 444, after observing that in England the grant of a patent for an invention was considered as simply an exercise of the royal prerogative, and was not to be construed as precluding the Crown from using the invention at its pleasure, the court said: 'But, in this country, letters patent for inventions are not granted in the exercise of prerogative or as a matter of favor, but under art. 1, § 8, of the Constitution of the United States, which gives Congress power 'to promote the progress of science and useful arts by securing, for limited terms, to authors and inventors, the exclusive right to their respective writings and discoveries.' The Patent act [16 Stat. at L. 201, chap. 230, § 22, U. S. Comp. Stat. 1901, p. 3381] provides that every patent shall contain a grant to the patentee, his heirs, and assigns, for a certain term of years, of 'the exclusive right to make, use, and vend the invention or discovery throughout the United States.' . . . And this court has repeatedly and uniformly declared that the United States have no more right than any private person to use a patented invention without license of the patentee or making compensation to him' citing United States v. Burns, 12 Wall. 246, 252, 20 L. ed. 388, 389; Cammeyer v. Newton, 94 U. S. 225, 235, 24 L. ed. 72, 76; James v. Campbell, 104 U. S. 356, 358, 26 L. ed. 786, 787; Hollister v. Benedict & B. Mfg. Co. 113 U. S. 59, 67, 28 L. ed. 901, 903, 5 Sup. Ct. Rep. 717; United States v. Palmer, 128 U. S. 262, 270, 272, 32 L. ed. 442, 444, 445, 9 Sup. Ct. Rep. 104.

In the previous case of United States v. Lee, 106 U. S. 196, 27 L. ed. 171, 1 Sup. Ct. Rep. 240, which was a...