amended by the act of February 27, 1877, c. 69, (19 St. 247.) The protest must set forth "distinctly and specifically" the grounds of objection to the decision of the collector as to the rate and amount of duties. Section 2931, Rev. St. This provision was taken from the act of June 30, 1864, c. 171, § 14, (13 St. 214,) and is substantially the same as that in the act of February 26, 1845, c. 22, (5 St. 727.) A protest is not required to be made with technical precision, but is sufficient if it shows fairly that the objection afterwards made at the trial was in the mind of the party and was brought to the knowledge of the collector, so as to secure to the government the practical advantage which the statute was designed to secure. Converse v. Burgess, 18 How. 413; Swanston v. Morton, 1 Curt. C. C. 294; Kriesler v. Morton, Id. 413; Burgess v. Converse, 2 Curt. C. C. 216; Steegman v. Maxwell, 3 Blatchf. 365; Frazee v. Moffitt, 20 Blatchf. 267; S. Č. 18 Fed. Rep. 584. This protest apprised the collector that the carriage was claimed to be free, under section 2505, as a carriage actually used abroad over a year. The "household effects" clause was in the mind of the party, and the collector could not fail to so understand. The protest was sufficient. The judgment of the circuit court is affirmed.

(112 U. S. 485)

BIRDSELL and another v. SHALIOL and another.

(December 8, 1884.)

PATENT DAMAGES FOR INFRINGEMENT SUBSEQUENT ACTION JOINING LICENSEE.

Judgment for and payment of nominal damages upon a bill in equity by a patentee, without joining his licensee, against one who has made and sold a machine in violation of the patent, are no bar to a bill in equity by the patentee and licensee together, for the benefit of the licensee, against another person who afterwards uses the same machine.

Appeal from the Circuit Court of the United States for the Northern District of Ohio.

W. W. Leggett, for appellants. No brief for appellees.

GRAY, J. This was a bill in equity for an injunction and damages for the infringement of a patent for an improvement in machines for threshing and hulling clover-seed. The answer set up a former decree as an estoppel. The case was heard in the circuit court upon a statement of facts agreed by the parties, by which it appeared to be as follows: Birdsell was the inventor and patentee of the improvement, and granted to the Birdsell Manufacturing Company, a corporation of which he was the president and active manager, and owner of a large part of the stock, an exclusive oral license to make, vend, and use his invention, but did not give it authority to license others to make, vend, and use. The corporation paid him no royalty, but set apart a sinking fund to defray the expense of defending the patent in the courts. A former suit in equity was brought by Birdsell against the Ashland Machine Company for an infringement of his patent by making and selling large numbers of machines. The Birdsell Manufacturing Company was not made a party to that suit, but participated in instituting it and carrying it on till its close. In that suit a perpetual injunction was decreed, and the case was referred to a master, before whom damages sustained by the Birdsell Manufacturing Company were proved and claimed, and who reported that the defendant had made no profits for which it should account, and that, if any damages had been sustained, they had been sustained by the Birdsell Manufacturing Company, a stranger to the suit, and that Birdsell, the plaintiff,*was entitled to recover only one dollar, as nominal damages. The Ashland Machine Company afterwards, pending that suit, became insolvent; and a decree was rendered in Birdsell's favor according to the master's report, for nominal damages and for costs, which were paid by that company. The

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present suit was brought by Birdsell and the Birdsell Manufacturing Company against Gerhart Shaliol and John Feikert, who had used one of the machines manufactured by the Ashland Machine Company, and embraced in the master's report in the suit against that company. The circuit court held that in the former suit the Birdsell Manufacturing Company, although not named as a party plaintiff in the bill, was in reality a co-plaintiff with Birdsell, and that, by the final decree in that suit, and the recovery and payment of nominal damages, Birdsell and the Birdsell Manufacturing Company were estopped to maintain the present bill; and therefore dismissed the bill, with costs. The plaintiffs appealed to this court.

The plaintiffs in the present suit-Birdsell, the patentee, in whom is the legal title, and the Birdsell Manufacturing Company, his licensee, in whom is the beneficial interest-make three objections to the decree set up by way of estoppel: (1) That the Birdsell Manufacturing Company was not a party; (2) that the present defendants were not parties; (3) that only nominal damages were recovered and paid.

1. A licensee of a patent cannot bring a suit in his own name, at law or in equity, for its infringement by a stranger; an action at law for the benefit of the licensee must be brought in the name of the patentee alone; a suit in equity may be brought by the patentee and the licensee together. Gayler v. Wilder, 10 How. 477, 495; Littlefield v. Perry, 21 Wall. 205, 223; Paper Bag Cases, 105 U. S. 766, 771. In a suit in equity brought by the patentee alone, if the defendant seasonably objected to the non-joinder of the licensee, the court might, as Judge LOWELL did in Hammond v. Hunt, 4 Ban. & A. 111, order him to be joined. But when a suit in equity has been brought and prosecuted, in the name of the patentee alone, with the licensee's consent and concurrence, to final judgment, from which, if for too small a sum, an appeal might have been taken in the name of the patentee, we should hesitate to say that the licensee, merely because he was not a formal plaintiff in that suit, could bring a new suit to recover damages against the same defendant for the same infringement.

2. It is a more serious question whether a decree in favor of the patentee, upon a bill in equity against one person for making and selling a patented machine, is a bar to a subsequent suit by the patentee against another person for afterwards using the same machine within the term of the patent. A license from the patentee to make, use, and sell machines gives the licensee the right to do so, within the scope of the license, throughout the term of the patent; and has the same effect upon machines sold by the licensee under authority of his license, that a sale by the patentee has upon machines sold by himself, of wholly releasing them from the monopoly, and discharging all claim of the patentee for their use by anybody; because such is the effect of the patentee's voluntary act of licensing or selling, in consideration of the sum paid him for the license or sale. Adams v. Burke, 17 Wall. 453. But an infringer does not, by paying damages for making and using a machine in infringement of a patent, acquire any right himself to the future use of the machine. On the contrary, he may, in addition to the payment of damages for past infringement, be restrained by injunction from further use, and, when the whole machine is an infringement of the patent, be ordered to deliver it up to be destroyed. Suffolk Co. v. Hayden, 3 Wall. 315, 320; Root v. Railway Co. 105 U. S. 189, 198; Needham v. Oxley, 8 Law T. Rep. (N. S.) 604; S. C. 2 New Rep. Eq. & C. L. 388; Frearson v. Loe, L. R. 9 Ch. Div. 00 48, 67. No more does one, who pays damages for selling a machine in infringement of a patent, acquire for himself or his vendee any right to use that machine. In the case of a license or a sale by the patentee, the rights of the licensee or the vendee arise out of contract with him. In the case of infringement, the liability of infringers arises out of their own wrongful invasion of his rights. The recovery and satisfaction of a judgment for damages against

$489

one wrong-doer do not ordinarily confer, upon him or upon others, the right to continue or repeat the wrong.

This view is in accord with the judgment of Vice Chancellor WOOD (after wards Lord Chancellor HATHERLEY) in two suits brought by a patentee, the one against the manufacturer, and the other against the user, where the plaintiff asked for an injunction against each, for an account against the man. ufacturer, and for damages against the user, and declined to accept an offei of the user to pay him the like royalties that other persons paid. It was argued in behalf of the user that the patentee was not entitled to damages against him, as well as to an account against the manufacturer, and could not have an account against the seller without adopting the sale, and, if he adopted the sale, had no right to get anything from the purchaser. But the vice chancellor held that the plaintiff was entitled to an injunction, to an account, or, upon his waiving that, to damages against the manufacturer, and also to damages against the user, and said: "With regard to the damages, i has never, I think, been held in this court that an account, directed against a manufacturer of a patented article, licenses the use of that article in the hands of all the purchasers. The patent is a continuing patent, and I do not see why the article should not be followed in every man's hand until the infringement is got rid of. So long as the article is used, there is continuing damage." 'As to the royalties, I cannot compel the plaintiff to accept the same royalty from these defendants as he receives from others. I cannot in the decree do less than give the plaintiff his full right, and I cannot bargain for him what he may choose or may not choose to do." Penn v. Bibby, L. R. 3 Eq. 308; S. C. 15 Wkly. Rep. 192.

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3. If one person is in any case exempt from being sued for damages for using the same machine for the making and selling of which damages have been recovered against and paid by another person, it can only be when actual damages have been paid, and upon the theory that the plaintiff has been deprived of the same property by the acts of two wrong-doers, and has received full compensation from one of them. In that view, the case of the patentee, whose right of property under his patent had been invaded, would be analogous to that of one from whom personal property had been taken. But, according to the law of England, as well as of America, the owner of a chattel, which others have taken from him and converted to their own use, is not deprived of his property therein by recovering judgment for damages against any or all of them, without actual satisfaction by somebody. By the law of England, indeed, as declared by its courts, upon technical grounds, the owner of a chattel, who has recovered judgment for its value in trover against one of two joint tort-feasors, cannot, although that judgment remains unsatisfied, bring a like action against the other for the same cause. But, even by that law, such a judgment against the one, without satisfaction, does not vest the property in the chattel in him, or bar a subsequent action against the other for continuing to detain the chattel. HOLROYD and LITTLEDALE, JJ., in Morris v. Robinson, 5 Dowl. & R. 34, 47, 48; S. C. 3 Barn. & C. 196, 206, 207; Brinsmead v. Harrison, L. R. 6 C. P. 584, and L. R. 7 C. P. 547, 554; Ex parte Drake, L. R. 5 Ch. Div. 866. In Brinsmead v. Harrison, Mr. Justice WILLES observed that to say that the mere obtaining judgment for nominal damages vests the property in the defendant would be an absurdity. L. R. 6 C. P. 588. By our law, judgment against one joint trespasser, without full satisfaction, is no bar to a suit against another for the same trespass. Lovejoy v. Murray, 3 Wall. 1. The reasons are therefore stronger, if possible, here than in England for holding that a judgment for nominal damages against one wrongdoer does not bar a suit against another for a continuance of the wrong.

The result is that, in any view of the case, the decree of the circuit court dismissing this bill was erroneous, and must be reversed.

(112 U. S. 580)

EDYE and another v. ROBERTSON, Collector, etc.1

[In Error to the Circuit Court of the United States for the Eastern District of New

York.]

CUNARD STEAM-SHIP CO. (Limited) v. ROBERTSON, Collector, etc.

SAME. SAME.

[In Error to the Circuit Court of the United States for the Southern District of New

York.]

(December 8, 1884.)

1. CONSTITUTIONAL LAW-REGULATION of COMMERCE - CHINESE IMMIGRATION—ACT OF AUGUST 3, 1882.

The act of congress of August 3, 1882, "to regulate immigration," which imposes upon the owners of steam or sailing vessels who shall bring passengers from a foreign port into a port of the United States a duty of 50 cents for every such passenger not a citizen of this country, is a valid exercise of the power to regulate commerce with foreign nations.

2. SAME-EFFECT OF PREVIOUS DECISIONS OF SUPREme Court.

Though the previous cases in this court on that subject related to state statutes only, they held those statutes void on the ground that authority to enact them was vested exclusively in congress by the constitution, and necessarily decided that when congress did pass such a statute, which it has done in this case, it would be valid.

3. SAME-OBJECT OF TAX.

The contribution levied on the ship-owner by this statute is designed to mitigate the evils incident to immigration from abroad by raising a fund for that purpose, and it is not, in the sense of the constitution, a tax subject to the limitations imposed by that instrument on the general taxing power of congress.

4. SAME-UNIFORMITY OF TAXATION.

A tax is uniform, within the meaning of the constitutional provision on that subject, when it operates with the same effect in all places where the subject of it is found, and is not wanting in such uniformity because the thing taxed is not equally distributed in all parts of the United States.

5. SAME-TREATY-EFFECT OF.

A treaty is primarily a compact between independent nations, and depends for the enforcement of its provisions on the honor and the interest of the governments which are parties to it. If these fail, its infraction becomes the subject of international reclamation and negotiation, which may lead to war to enforce them. With this judicial courts have nothing to do.

6. SAME-PRIvate Rights-SUPREME LAW of the LAND.

But a treaty may also confer private rights on citizens or subjects of the contracting powers which are of a nature to be enforced in a court of justice, and which furnishes a rule of decision in such cases. The constitution of the United States makes the treaty, while in force, a part of the supreme law of the land in all courts where such rights are to be tried.

7. SAME-EFFECT OF ACTS OF CONGRESS.

But in this respect, so far as the provisions of a treaty can become the subject of judicial cognizance in the courts of the country, they are subject to such acts as congress may pass for their enforcement, modification, or repeal.

Geo. De Forest Lord, for Cunard Steam-ship Co. Philip J. Joachimsen and Edwards Pierrepont, for Edye and others. Sol. Gen. Phillips, for Robertson, Collector, etc.

*MILLER, J. These cases all involve the same questions of law, and have been argued before this court together. The case at the head of the list presents all the facts in the form of an agreed statement signed by counsel, and it therefore brings the questions before us very fully. The other two were decided by the circuit court on demurrer to the declaration. They will be disposed of here in one opinion, which will have reference to the case as made

18. C. 18 Fed. Rep. 135.

8. C. 18 Fed. Rep. 147.

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by the record in Edye et al. v. Robertson. The suit is brought to recover from Robertson the sum of money received by him, as collector of the port of New York, from plaintiffs, on account of their landing in that port passengers from foreign ports, not citizens of the United States, at the rate of 50 cents for each of such passengers, under the act of congress of August 3, 1882, entitled "An act to regulate immigration." The petition of plaintiffs and the agreed facts, which are also made the finding of the court to which the case was submitted without a jury, are the same with regard to each of many arrivals of vessels of the plaintiffs, except as to the name of the vessel and the number and age of the passengers. The statement as to the arrival first named, which is here given, will be sufficient for them all, for the purposes of this opinion.

The following are admitted to be the facts in this action: "(1) That the plaintiffs are partners in trade in the city of New York under the firm name of Funch, Edye & Co., and carry on the business of transporting passengers and freight upon the high seas between Holland and the United States of America as consignees and agents. That on the second day of October, 1882, there arrived, consigned to the plaintiffs, the Dutch ship Leerdam, owned by certain citizens or subjects of the kingdom of Holland, and belonging to the nationality of Holland, at the port of New York. She had sailed from the foreign port of Rotterdam, in Holland, bound to New York, and carried 382 persons not citizens of the United States. That among said 382 persons 20 were severally under the age of one year and 59 were severally between the ages of one year and eight years. That upon the arrival of said steam-ship Leerdam within the collection district of New York, the master thereof gave, in pursuance to section 9 of the passenger act of 1882, and delivered to the custom-house officer, who first came on board the vessel and made demand therefor, a correct list, signed by the master, of all the passengers taken on board of said Leerdam at said Rotterdam, specifying separately the names of the cabin passengers, their age, sex, calling, and the country of which they are citizens, and also the name, age, sex, calling, and native country of each emigrant passenger or passengers other than cabin passengers, and their intended destination or location, and in all other respects complying with said ninth section, and a duplicate of the aforesaid list of passengers, verified by the oath of the master, was. with the manifest of the cargo, delivered by the master to the defendant as*collector of customs of the port of New York on the entry of said vessel. That it appears from the said list of passengers and duplicate that the said 382 persons were each and every one subjects of Holland or other foreign powers in treaty of peace, amity, and commerce with the United States. That the said passenger manifest also states the total number of passengers, and shows that 20 of them were under one year of age, and 59 between the ages of one year and eight years. That said collector, before allowing complete entry of said vessel, as collector decided, on the twelfth day of October, 1882, that the plaintiffs must pay a duty of one hundred and ninety-one dollars for said passengers, being fifty cents for each of said 382 passengers. That by the regulations of the treasury department the non-payment of said 191 dollars would have permitted the defendant to refuse the complete entry of the vessel, or to refuse to give her a clearance from the port of New York to her home port, and such imposition would have created an apparent lien on said vessel for said sum of 191 dollars. On the defendants making such demand the plaintiffs paid the same and protested against the payment thereof. That a copy of the protest in regard to said Leerdam is annexed to the complaint, marked No. 1,' and is a correct copy of the protest. That on the same day the plaintiffs duly appealed to the secretary of treasury from such decision of the collector, and that the paper marked Appeal No. 2,' annexed to the complaint, is a copy of said appeal. On the eighteenth October, 1882, the secretary of the treasury sus

289.

889.