attempt or offer to use, and does not include the actual use of force. The word occurs, perhaps, most frequently in the phrase assault and battery, in construing which the two nouns are to be carefully discriminated. Assault covers only the offer, the threat in action; the actual use of force is embraced by battery. In all the ordinary cases of criminal violence, the two are combined, in fact, hence they have from the earliest times been combined in the name; and assault and battery is in common use as designating what is to all ordinary intents a single offense. There may be, however, a punishable assault, without any battery being involved; as where the intention is abandoned, or the attempt is frustrated, before actual use of violence; and in trespass for assault and battery, a defendant may be found guilty of the assault and not guilty of the battery. It seems safe to say that there can be no battery without a preliminary assault. The practical utility of using the double name is doubtful. Offenses, generally, include an offer or attempt, as well as an actual commission; and why the two elements should be so carefully discriminated in the name, in the case of battery, and not in other cases, is not obvious. It would seem that assault might be reserved for the offense of offering or attempting violence not followed by an actual use of it; and that battery alone was a sufficient name for the unlawful use of violence, the preliminary attempt being treated as merged in the commission, as in other of fenses. But the employment of the phrase assault and battery is very general; while assault is, in popular language, often employed as including battery. The authorities, however, sustain the distinction between the two. 4. Some demonstration of force capable of injuring the person is essential; mere threats do not constitute an assault, if unaccompanied by an offer or attempt to strike. Smith v. State, 39 Miss. 524; State v. Mooney, Phill. L. 434; and see the definition by Jacobs, But the violence involved and quoted above. injury portended may be the very slightest. 5. An act done with the consent of the person affected is not an assault. This is implied in the term corporal injury. What is done to a consenting person is not an injury in the legal sense, volenti non fit injuria. Thus, though a child of tender years can not legally consent

to sexual intercourse, yet she may consent to an attempt to commit it; and an attempt made with her consent is not an assault. Reg. v. Cockburn, 3 Cox Cr. Cas. 543; Reg. v. Read, Id. 266, 2 Car & K. 957, 2 Den. Cr. Cas. 377; Rex v. Mehegan, 7 Cox Cr. Cas. 145. But there must be actual consent in these cases; mere omission to resist, or consent obtained by fraud, is not enough to deprive the act of the character of an assault. Reg. v. Case, 4 Cox Cr. Cas. 220, 1 Den. Cr.

Cas. 580.


Having shown in our former paper that trademarks do not come within the letter of the constitutional provision relating to patents and copyrights, our next inquiry will be, do they come within its spirit and purpose?

The theory of the Constitution in providing for the encouragement and protection of authors and inventors, by the grant of patents and copyrights, has been explained. They were a meritorious class, whose labors were recognized as resulting in the public good, but the common law gave them no encouragement, because no protection. Therefore there was need for express legislation. The purpose of the Constitution, therefore, was-first, to induce authors and inventors to disclose their works and make them known, that they might be enjoyed by the public under restrictions, at first, it is true; second, to surrender them

altogether to the public, after a limited monopoly, so that the public might enjoy them free from all restrictions. When the right to practice the invention, or print and sell the writing, was surrendered after the termination of the patent or copyright, such surrender was contemplated as a thing of value, likely to "pro

mote the progress of science and the useful arts," and as the chief part of the consideration for which the grant was made. 2 Story on Const., sec. 1152; Grant v. Raymond, 6 Pet. 241. "Patents are granted to inventors not for their benefit simply, but for the purpose of benefiting the public by encouraging inventors to make inventions which may be useful to the public when placed at their disposal." Ransom v. Mayor, 1 Fish. 255; Kendall v. Winsor, 21 How. 327. The Constitution recognizes the necessity for some special inducement

to authors and inventors to make known their works, and, therefore, provided such special inducement. But surely there can be no need for any special encouragement to induce a tradesman to make his trade-mark as widely known as it is possibie for him to make it. Does he not derive benefit from its use only in so far as it is made public? One may very well derive profit from the secret practice of his invention. But a secret trade-mark is not only a thing of no value, but is, in fact, a contradiction in terms. There can be no such thing. There is not the slightest incentive beyond his own self-interest needed, therefore, to induce a tradesman to make his trade-mark public. In this respect, therefore, the constitutional provision, if it be construed to apply to trade-marks, is simply an idle thing, that effects nothing more than would have been effected without it.

But another purpose of the law in granting patents and copyrights is that, after the termination of a limited period, the public shall have free use of the invention or work entirely unrestrained by the author or inventor. And such free public use is supposed to constitute a valuable consideration that passes to the public-is supposed to "promote the progress of science and the useful arts." Now, in the first place, a trade-mark does not continue merely for a limited time. Humanly speaking, it may continue forever. How long have the marks of Wostenholm, Rodgers Sons, and Wedgwood been in existence, and who can say when they will cease to be used by the proprietors? But when the right does cease to be exclusive—when it does become public property, so that any one and every one is at perfect liberty to use it-what then? Does a valuable consideration thereby pass to the public? If what was once known to the public as A's trade-mark at length ceases to belong exclusively to A, and may be used freely by B, and C and D, what benefit accrues to the public, to purchasers in general, beyond the privilege of being cheated to their heart's content? If I buy goods with A's trade-mark upon them, I do so presumably because I want A's goods, and expect to get them. But if B, and C, and D may all put A's mark upon their goods also, is the result anything but mischief both to A himself, and to all who wished to buy A's goods, the public? If this were the jaw, the only art or science promoted would be

that of robbing A and cheating his customers. In fact, the right to use a particular trademark is of no possible use to any one except dishonest men, unless it does remain exclusive. Browne on Trade-marks, secs. 303, 679. And when it ceases to be exclusive, not only is it of no use, but it becomes a most mischievous thing, both to its original proprietor and to the public.

Thus we have shown trade-marks not to be within either the letter or the spirit of the constitutional provision relating to patents and copyrights. In fact it is highly improbable that any of the framers of the constitution ever had to do with the law of trade-marks, or ever contemplated any legislation respecting them. The law relating to trade-marks is of very recent origin. In Coddington's "Digest of the Law of Trade-Marks,” containing cases in the courts of France, Ireland, Canada, Great Britain and the United States, from the earliest reported decisions down to 1878, though the first case arose about the middle of the sixteenth century, for 150 years following, only six cases could be found. From 1805 the cases, English and American, are as follows: 1805 to 1815, 3 cases; 1815 to 1825, 5; 1825 to 1835, 6; 1835 to 1845, 13; 1845 to 1855, 46; 1855 to 1865, 104; 1865 to 1875, 168. The earliest American case noted in Law's "Digest of Patent, Copyright and Trade-Mark Cases," covering a period from 1789 to 1862, is, I believe, the case of Snowden v. Noah, Hopk. Ch. R. (N. Y.) 353. That case was decided in 1825. Legislation has been equally tardy on this subject. Browne on Trade-Marks, sec. 26. It is a significant fact in this connection that, although Congress has exercised its power to grant patents and copyrights constantly, having passed laws with reference thereto at its very first session (Act of 1790, ch. 7, Patents; ch. 15 Copyrights, 1 Stat. at Large, 109, 124,) and repeatedly added to, changed, and systematized them ever since, it had never, until the act of July 8, 1870, attempted to deal with trade-marks, at least as a subject of general legislation. The whole matter was left for eighty years to the individual statesto the common law as moulded by the courts of England and of the states. The only protection afforded to the proprietors of a trademark was such protection as the common law, as enforced by the state courts, aided in some

of the states-as New York, California and Missouri-by state statutes, afforded. In the application of the India Rubber Comb Company, 8 O. S. 907, the commissioner of patents surmises that the principal objects of the act of July 8, 1870, are "to better protect these common law interests in the courts of the United States, and to extend its privileges to citizens of those foreign countries which afford the same protection to citizens of our country." But the act of 1870 was not an extension of these privileges; if by this it be meant that the act conferred a right where none before existed. The right of an alien friend to sue for the infringement of his trademark, was well-established long before the act of 1870. In England, in Collins Co. v. Brown, 3 K. & T. 423; Same v. Cohen, id. 428; in this country, in the state courts, in Taylor v. Carpenter, 11 Paige, 296 (N. Y. 1845); Same v. Same, 2 Sandf. Ch. 614; Coates v. Hotbrook, 2 Sandf. Ch. 595-6-8; and in the United States Courts, in Taylor v. Carpenter, 3 Story, 464; Same v. Same, 2 Woodb. & M. 9; Coffeen v. Brunton, 4 McLean, 520 (1849).

If the power of Congress to deal with trademarks be derived from the section of the constitution relating to patents and cpyrights, there follows a consequence which the court, in Duwell v. Bohmer, perhaps, hardly contemplated, viz: the state courts have no right to entertain jurisdiction of trade-mark cases at all. There is very strong authority for the position that the whole power granted to Congress in Act. I, Sec. 8, Clause 8, is exclusive of the states-that the power to secure to authors and inventors the exclusive right to their works for a limited time is vested solely in Congress; that the state "can not limit, control or even exercise that power." Woolen v. Banker, 5 Rep. 260. So Cranson v. Smith, 5 Cent. L. J. 386; Ex parte Robinson, 2 Biss. 309; Hallida v. Hunt, 70 Ill. 109; Helm. v. Bank, 43 Ind. 167; Grover S. M. Co. v. Butler, 53 Ind. 454; Read v. Miller, 1 Biss.; Anthony v. Carroll, 9 O. S. 200. Story says the power was given to Congress expressly to avoid the danger of different and conflicting regulations on the subject by the states, a result which would practically destroy the value of the right to those for whose benefit the provision was intended. "The states could not

separately make effectual provision for the case. 2 Story on Const., sec. 1152; 2 Kent's Com. 366. Congress has fully and completely exercised the power conferred by this section ever since its grant. This is sufficient to exclude the states from all jurisdiction over the whole subject matter of this section. And so it has been repeatedly decided. Dudley v. Mayhew, 3 N. Y. 9; Parsons v. Barnard, 7 Johns. 144; Gibson v. Woodworth, 8 Paige, 134; Hovey v. Rubber T. Co. 57 N. Y. 119. Every action relating to trade-marks, therefore, which has been heard. and passed upon by the state courts since July 8, 1870 (and there have been hundreds) has been improperly brought and has been. heard without authority! All judgments and decrees of the state courts, rendered in such cases since that date (if not, indeed, ever since the power was vested in Congress by the Constitution, if that power be exclusive) are utterly void! In fact, if a "trade-mark law is, in any fair sense, a copyright law," this is undoubtedly the case, for, "the jurisdiction vested in the courts of the United States

shall be exclusive of the courts of the several states-in all cases arising under the patent right or copyright laws of the United States." Rev. St., sec. 711. For we take it, it could not have been the intention of Congress in passing the act of March 3, 1875, broad and general and affirmative only in its terms, thereby to repeal these special provisions of the Revised Statutes. Certainly it has never entered the head of any lawyer, since March 3, 1875, to bring a patent suit in a state court. In truth, since the right to a trade-mark is not a right arising under any law of the United States; since it is a right which Congress does not, even in the act of 1870, pretend to create or confer ("In respect to a trade-mark the statute does not authorize the commissioner of patents to issue any letters patent therefor, or to issue any certificate containing a grant thereof." Smith v. Reynolds, 3 O. S. 214; Browne on Trade-Marks, sec. 382 and 357)—the only ground of jurisdiction of the Federal Courts over cases in which both parties are citizens of the United States, is that they are citizens of different states.

The mere fact that a trade-mark is registered in the U. S. Patent Office can make no differ


The only advantage obtained by such registration is that the certificate of registration may be useful as evidence in establishing the date of adoption and use. Smith v. Reynolds, 3 O. S. 214; Browne on Trade-marks, sec. 381; Dutcher Temple Co., Commissioner of Patents, Decisions for 1871, p. 249. In this last case it was inferred that registry under the act supplied the place of long use at common law. But the Commissioner was wrong in supposing either that the mere fact of registry created any right that did not already exist, or that long use was absolutely essential at common law. Property in a trade-mark may be acquired by a week's use, even though the article marked with it has attained no special reputation under that designation. Hall v. Barrows, 4 De G., J. & S. 150; Glen & Hall Mnfg. Co. v. Hall, 61 N. Y. 226; McAndrews v. Bassett, 10 Jur. (N. S.) 550; High on Injunctions, sec. 672. "What time is required for the perfection of title?


moment one who has selected a symbol to indicate his merchandise applies the mark to his goods, the act is complete. The avowal of his intention to adopt, his registration of the mark, and notice to the whole world, do not constitute adoption; but apply the mark to the articles for sale, and eo instanti, the act is complete." Browne on Trade-marks, sec. 52. That is, it is the adoption and actual use that creates the title, not the mere registration. Immediately a patent issues, the title to the invention is complete. The patentee may put away his patent in a closet, and never use the invention; but his right to exclude others from using it will remain in full vigor. This is not so with a trade-mark. If the registrant never uses it, there is no doubt that some one else may. Browne on Trade-marks, sec. 129.

The mere fact, therefore, that a trade-mark, the title to which is in dispute, has been registered under the act of Congress, will not constitute such a dispute a 66 case arising under the Constitution or laws of the United States," such as a patent or copyright suit would be. Wolf v. Barnett, 13 Am. Rep. 114, was an action for damages for the imitation of the plaintiff's trade-mark, which had been registered in the Patent Office. It was objected that the certificate of registration was informal or defective in some particular, and therefore it should not be admitted as evidence. The court said: "This is not a suit to enjoin the

[blocks in formation]

Rogers & Hover, for appellant; Finches, Lynde & Miller, for respondent.

LYON, J., delivered the opinion of the court:

This action was brought to recover damages for the alleged negligence of the defendants in placing and leaving in an open space, or passage-way for teams, in the rear of their store, in the city of Milwaukee, certain caustic substances, through which the teamster of the plaintiff drove the team of the latter, by means whereof the horses were injured.

It appears that the defendants occupied a store on the east side of West Water street, as tenants of the owners. There were several stores in the same block. On the north and south sides of the block were alleys or passage-ways for teams, extending from the street to the Milwaukee River. A space about thirty feet wide was left open in the rear of the stores along the river, connecting with the two alleys just mentioned. For many years

before, and down to the time of the alleged injury, the alleys and open space along the river had been and were constantly used by the owners and lessees of such stores for the purposes of their business as a passage or driveway for teams, without objection from any one. When his horses were injured the plaintiff was engaged in hauling goods with them for Webster Brothers, who occupied a store in the same block adjoining that occupied by the defendants.

For the purpose of showing that the plaintiff's horses were lawfully at the place of injury, it is alleged in the complaint that, when the store occupied by the defendants was erected, “an alley was thrown out or opened by the owner or owners of said premises for the mutual and common use and benefit of all the owners of lots and stores in said block, in the rear of said stores, which alley ever since has been used by the public and owners and occupants of said several stores and premises, and their several customers and employees, under said arrangement and agreement of the several owners and occupants thereof."


The answer of the defendants contains denials of most of the material allegations of the complaint, and also an express denial that, at the time of the injury complained of, the plaintiff was lawfully with his team of horses in said alley, or on said open space, but was, if there at all, there as a trespasser.'

On the trial the plaintiff proved, in addition to the facts above stated, that his horses were injured in the manner stated in the complaint, while engaged in hauling goods for Webster Brothers, and that his teamster was ignorant of the caustic nature of the materials deposited in the open space or alley. He also gave evidence tending to prove that such materials were deposited there by defendants.

At the close of the plaintiff's proofs, the court, on motion of the defendant, non-suited the plaintiff. A motion for a new trial was afterwards made and denied, and judgment for costs was rendered against the plaintiff. From such judgment the plaintiff has appealed.

The motion for a non-suit was put upon the ground that there was no proof that the place where plaintiff's horses were injured was a public highway, but the record fails to disclose the grounds upon which the court granted the motion. Were this otherwise-and had the motion been granted for insufficient reasons-still if the record discloses any sufficient ground for it the non-suit will not be disturbed.

One of the issues in the case is, whether the plaintiff's horses, when injured, were lawfully at the place of injury. It is alleged in the complaint that they were lawfully there and this allegation is denied in the answer. True, the grounds of the right claimed are stated in the complaint, and the right is derived from certain alleged acts and agreements of the owners and occupants of the block, but the answer directly tenders the broad unqualified issue of the right of the plaintiff to drive his team through the open space in which the injury occurred. It seems to us that under these plead

ings, it was competent for the plaintiff to show that his horses were lawfully there, and that to this end, he might show that the place was a passage way for teams doing the work of Webster Brothers, made so either by grant, prescription or license.

The plaintiff did not attempt to show any right of way there by grant or prescription, but he did prove a state of facts from which the jury might well have found that he had a license from the owners and lessees of the block, including the defendants, to drive there when doing the work of Webster Brothers. Such a license, until revoked, is as effectual to sustain this action, as would be proof that the alleys or open spaces are public or private ways by grant or prescription, over which the plaintiff had lawful right to drive his team.

But if there is a variance between the allegations of the complaint and the proofs in respect to such right of passage at the point of injury, it is immaterial. The evidence of the long-continued and uninterrupted user by the occupants of the block, of the open space as a passage-way for teams, was received without objection. In view of the issue they tendered, the defendants could not have been misled or prejudiced by it. At any rate, they offered no proof that they were misled by it, and in the absence of such proof the variance (if there was a variance) is immaterial, and should be disregarded, or the complaint amended to correspond with the proofs. R. S., ch. 125, secs. 33 and 34. Certainly there is no ground here for saying that the cause of action, in its entire scope and meaning, is improved, for the fact is clearly otherwise.

The question of the negligence of the respective parties was for the jury. Upon the evidence before us we can not say, as matter of law, either that the injury complained of was not caused by the negligence of the defendants, or that the plaintiff's teamster was guilty of negligence which contributed thereto.

We find nothing in the record which is necessarily fatal to the plaintiff's right to recover in the action, and hence we think the non-suit should not have been ordered.

Judgment reversed, and cause remanded for a new trial.



United States Circuit Court, Eastern District of Arkansas, June, 1878.

Before HON. H. C. CALDWELL, District Judge.

1. SUBPOENA TO ANSWER CROSS-BILL-WHEN SERVICE ON SOLICITOR GOOD. - The general chancery rule is, that service of subpoena to answer a cross-bill can not be made upon the solicitor of the plaintiff in the original bill, but to this rule the United States Circuit Court recognizes two exceptions, one in cases of injunctions to stay proceedings at law, and the other in cross suits in equity, where the plaintiff at law in the first and the plaintiff in equity in the second case reside

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