SARRAZIN v. W. R. IRBY CIGAR & TOBACCO CO., Limited, 93 F. 624

PARDEE, Circuit Judge (after stating the facts as above). Where there is an issue of fact in the circuit court, and a jury is waived, and the cause submitted to the court, as permitted in sections 649, 700, Rev. St., there is nothing to review in the appellate court, except (1) rulings of the court in the progress of the trial, if excepted to at the time, and duly presented by a bill of exceptions; and, (2) when the finding is special, the review may extend to the determination of the sufficiency of the facts found to support the judgment.

Under the jurisprudence of the state of Louisiana, the judgment accepting the cession in insolvency proceedings is a final decree, which can only be set aside bv an appeal, or in an action of nullity. State v. Green, 34 La. Ann. 1027. Under the same jurisprudence, it has been settled that the production of the entire record in mortuary and in insolvency proceedings, in order to prove a single fact or date, or a certain part of the proceedings, is not necessary. McIntosh v. Smith, 2 La. Ann. 756; Succession of Stafford, Id. 886; Price v. Emerson, 14 La. Ann. 141; Succession of Broom, 14 La. Ann. 67; Henderson v.

Maxwell, 22 La. Ann. 357. It is difficult to see what injury could result to the plaintiff from the introduction of only part of the record, or what advantage would result to either party from the introduction of the whole record. The bill of exceptions does not show what particular issue the certificate was offered to prove, and we can only infer the relevancy of the certificate for any purpose from the issues between the parties.

The fact found by the trial judge is to the effect that the plaintiff, Sarrazin, had sold, assigned, and transferred all title and ownership to his trade-mark, if, as a matter of law in the state of Louisiana, such trade-mark was embraced within the property ceded. The law of Louisiana requires a cession of all the property of the insolvent debtor, and, upon acceptance of the cession by the court, vests such property immediately in the creditors. Rev. St. La. § 1791.

It seems to be now settled beyond dispute that both in the state and federal courts a cession does include all the property of the debtor, whether the same is mentioned in the

schedule of his property, or whether the debtor intended to surrender it, or not. The cession offered, and accepted by the court, vests the property of the debtor in the creditors, in any and every event. Muse v. Yarborough, 11 La. 521; Dwight v. Simon, 4 La. Ann. 490; Bank v. Horn, 17 How. 157; Geilinger v. Philippi, 133 U. S. 246, 10 Sup. Ct. 266. Every trade-mark is assignable, together with the business in which it is used, unless it is strictly personal. Kidd v. Johnson, 100 U. S. 617; Chemical Co. v. Meyer, 139 U. S. 547, 11 Sup. Ct. 625; Warren v. Thread Co., 134 Mass. 247; Nervine Co. v. Richmond, 159 U.

S. 302; 16 Sup. Ct. 30. If a trade-mark belongs to the class of assignable trade-marks, it is transferred, by the operation of an insolvency or bankrupt law, to the assignee, as part of the bankrupt’s assets. There is nothing in the petition to show that the plaintiff’s trade-mark was anything but the name “King Bee,” which could be in no sense personal.

In an appendix to the bill of exceptions, there appears to be an application for the registry of the plaintiff’s trade-mark, wherein the [daintiff states that his trade-mark consists of the words “King Bee.” After describing minutely the medals, rosettes, and other details, including his own ñame as the manufacturer, he adds, “The medals may be (limited and changed at pleasure without materially altering the character of my trade-mark, the essential features of which are the words ‘King Bee.’” This does not describe a trade-mark requiring the skill of a particular individual to be exercised in the manufacture or selection of the goods upon which it is to be used.

See Warren v. Thread Oo., supra. The plaintiff in error, laying great stress upon the registry of his trade-mark, has presented his case as though, because of the alleged registry, it is one arising under the laws of the United States, and as though patents and copyrights and trade-marks are in some wise identical as property rights, and in any assignment and transfer the same statutory rules prevail.

His assignments of error therefore cover a number of propositions which are so’ well answered in the brief of the learned counsel for tlie defendant in error that we quote therefrom as follows: “The plaintiff’s counsel attempted in the lower court, and are attempting here, to confound a trade-mark with a patent, and to liken the registry law of .March 3, 1881, to the patent acts.

There is no analogy whatever between them. 1’at caits and copyrights are specific grants made by the congress to inventors and anthers under a special clause in the constitution, and tlie authority of the congress over the same is exclusive. Tlie congress has no authority over trade-marks, as such, and for this reason the original trade-mark laws of July 8, 1870, and August, 14, ¡87(5, were declared unconstitutional and void by the supreme court in The Trade-Mark Oases, 100 II. S. 82.

The court in that case declined to decide whether the congress, under the power to regulate commerce with foreign countries, etc., might, as to such commerce1, regulate 1lie trade-marks used in such commerce. Judge .Miller, in deciding Ote ease, used this language on the nature of a trade-mark: ‘The right to adopt and use a symbol or a device to distinguish the goods or property made1 or sold by the person whose mark it is has long been recognized by tlie common law, and the chancery courts of England and of this country, and by the statutes of some of the states.

It is a property right, for the violation of which damages may be recovered in an action at law; and the continued violation of it will bo enjoined by a court ol‘ equity, with compensation for past infringement. Tills exclusive right was not created by tlie act of congress, and does not now depend upon it'for its enforcement.

The whole system of trade-mark properly, and the civil remedies for its protection, existed long anterior to that act. and have remained in full force since its passage.’ In 1881 the congress adopted a law relative to the registry of trade-marks used in foreign commerce and with the Indian trilles. If this law Is constitutional, it must be pitched on the power to regulate commerce. We have no desire to contest this question itere, as it (iocs not pertain, to this case.

The statute is extremely narrow, and it does not attempt to cover the infringement of trade-marks used within tlie United States in state and interstate commerce; and (lie federal courts have no jurisdiction to enforce any rights or claims under said law, unless it is averred by the plaintiff that the defendant, is infringing in the matter of foreign commerce or with the Indian tribes. Luyties v. Hollender, 21 Fed. 281; Schumacher v. Schwencke, 26 Fed. 818; Graveley v. Graveley. 42 Fed. 265; Ryder v. Holt, 128 U. S. 525, 9 Sup. Ct. 145; Manufacturing Co. v. Ludeling, 22 Fed. 823.

The registry of a trade-mark under this law adds nothing to the right of ownership therein (except jurisdiction in tlie United States court, of doubtful constitutionality), and takes nothing away from such ownership (see language of Wheeler, J., In Schumacher v. Schwencke, supra, and of Bond, J., in Graveley v. Graveley, supra). In a suit not pitched upon the statute (i. e. in a suit between citizens of different states, alleging infringement generally, covering state and interstate commerce), the fact that the trade-mark in question is registered, vel non, is a matter of utter irrelevance.

The counsel are laboring under the error of confounding the trade-mark, or the right to the same, with the registry thereof, or, rather, with the mere certificate of such registry. Sections 10 and 11 of the act make it as clear as possible that the act does not in any manner ‘prevent, lessen, impeach or avoid,’ any remedy or right, or ‘unfavorably affect any claim to a trade-mark' either before registry, after registry, or even after the term of registry has expired.

Nor does this act make registry anything but prima facie evidence of ownership, so that one may be the’ registered owner, and another the actual owner. It thus appears that trade-marks do not lie in the sphere of patents and patent rights. The latter are governmental grants of exclusive privileges, and the federal government is given sole and exclusive legislative authority over them. The other are mere common-law rights of property in devices used in trade to designate origin, quality, grade, or source of manufacture of certain articles.

These rights of property depend on the general fundamental rights of individuals, and the statutes of the different states. If they can be affected by federal legislation at all, it is only within the sphere of commerce between the states, with foreign nations, and with the Indian tribes.” None of the assignments of error are well taken, and the judgment of the circuit court is affirmed.