GRAVELEY V. GRAVELEY.
et al. v. GRAVELEY et al.
(Oi1;cuit Oourt, W. D. Virginia. Apri119, 1890.)
TBADE-MARKS-INFRINGEl\l:ENT-JURISDICTION OF CIRCUIT COURT.
Under Act Congo March 3, 1881, relating to registration of trade-marks used in foreign commerce, the circuit court has no jurisdiction of a bill for infringement where both parties reside in the state, and it does not appear that the trade-mark is used in foreign commerce.
In Equity. B. F. Graveley & Son filed their bill, November 24, 1888, against B. F. Graveley & Co., to recover damages of the defendants for using trademarks on tobatco manufactured by them so similar to those used by' the complainants on the celebrated "Graveley tobacco" as to constitute an 'infringement, and to enjoin the defendants il'om the further use of such trade-marks. 'Greeeit Miller, for complainants. PeatroM & Harris,' for defendants. and PAUL, JJ. Before BOND,. J. This·isa bill filed to enjoin the defendants from using the trade-mark of the complainants, which had been duly registered under the act of March 3,1881. The parties to these proceedings are all citizens and residents of Virginia, so that whatever jurisdiction the court may have to entertain the bill arises not from the citizenship of the parties, but from the fact· that the complainants have a right guarantied to them by act of congress, which right is the exclusive use of their registered trade-marks against the claims of all other persons to use the same. If it be admitted that the complainants are entitled to the exclusive use Of the trade-m,rks mentioned in the bill otherwise than by act of congress, a matterwhlCh, in our view of the case, it is not necessary to determine, and that the defendants have used them upon tobacco of their manufacture without the consent of the complainants, they do not derive that right of exclusive use from any statute of the United States. Their right under the' laws of the United Slates is the right to use these registered in foreign commerce. Act March 3, 1881, (21 U. S. St. at Large, 502'.) The bill in this case nowhere asserts that the defendants have used these registered trade-marks in foreign COmmerce, nor does the proof show a single instance of such use on their part. Under these circumstances, ·since the parties to the suit are cjtizens of the same state, and since the only right guarantied to complainants by the laws of the United States is the right to use exclusively their registered trademarks in foreign commerce, which right it is not alleged the defendants have infringed, it seems the court is without jurisdiction in the matter. The complainants may be entitled to the exclusive use of these registered trade-marks at common law, or under some state statute, and, if they were citizens of different states, might possibly file this bill here; but, under the state of facts above set forth, we think the bill must be dismissed for want of jurisdiction, and it is so ordered.
ldUNRO .V,, SMITH
Ma.y 5; 1890.1
, (Oirculft:eowrt, S. D. NeW York.
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of complainanfs and magazines containing pictures . q',1',Qld Sleuth':,at;e notinfrilrgedl:\y defendaI!-ts: books. having II; picture of "Old Sleuth, the Detective," on the cover; the varlatIonsbemg suffiClent to make the pictures very different.
For copyright. for pll:rlntiff" ' , .' . 4rt:liibqld .L. SessionB, for defendants. " , ,
,J. is a' bill whiph is founded upon' the alleged infringement of a copyright. The complainant is the publisher of a series of stories called tlle "pld Sleqth Library," and purporting to be written by "Old Sleuth.," Each story" i,a puplished separately in pamphlet form, and upon picture ,of "Old Sleuth," a detective, in large, old-fashioned clothes, with full, bushy .bea,rq'lspootacles, fob chain, and· baggy umbrella. Elich 'number of theaeties·is copy.righted. Tbe complainant has also published It magaziIlel :called 'Fireside Companion, number of which is copyIn the number jssued January 7, 1884, .he commenced the publication of a Sleuth in Philadelphia," the first .,page, of: whichcoritained: asimillU: ,picture of the detective. Since the dateQf the plaintiff's copyright, ,the defendants ;have been the publishers ofa series ofs.tories upon the cover of each volume, See:ret-ServiceStodes of Old· Sleuth and Others." and two or ·more',Qf them are also repres'ented upon thecover"tQbe written by "Old,Sleuth." There is also a,pioture of "Old SleutJh, the Detective," upon, the cover. All t.hese stQdeSi both of the plaintiff and defend·written by th", same person,one of whose assumed names i,s",Old Sleuth." Theeomplainant's bill is so drawn as to allege that he bad a copyright in :the pamphlet or magazine, and also in the pdnt.· [t is manifest ,from the certificates of the librarian of congresa,that the several pamphlets and magazines containing the pictute wereco,pyrighted,butthilt there was no separate copyright in the engraving,ol' print or cut·. The picture was a part of the· book, and the theory of the cOJ;Ilplainnnt is that this copyrighLwas infringed by copyiQg,puhlishing, ,$.!ild seilliag copies of thispl).rt.of his book. I ,shall $SSUUle that this theory is correct, and that,,,,heo a defendant rean originill piotllre or illustratioll owned by ,the complainant, a;book or magazine upon which he 'has a. valid copyl'ightisuoh :llight.is infring0d. The only question in this <lase is in ',regalld infringement. The b"ought a bill in equity defendants, before the supreme court for tbestate of New :Y;ork, 'for an injunction against the !use".of the .picture or the phrase "Old Sleuth, the Detective," orthe.wprd."Sleuth," upon the ground