1 says, it is doubtless to this knowledge of the common-law and statutable rights of authors and inventors that we are to attribute this constitutional provision, being beneficial to all parties. It was beneficial to authors and inventors, because it maintained their rights to the product of their intellectual labor; and beneficial to the public, as it would promote the progress of science and the useful arts, and admit the people at large, after a short interval, to the full possession and enjoyment of all writings and inventions without restraint. In short, the only boon which could be offered to inventors to disclose the secrets of their discoveries would be the exclusive right and profit of them, as a monopoly, for a limited period. A copyright is limited by time: a trade-mark is not. A copyright is limited territorially, but a trade-mark acknowledges no boundaries. They are unlike in their natures. § 110. Literature, invention, and the fine arts needed a fostering hand, and found it. The consideration paid by them for a monopoly was a surrender to the public after a limited time. The consideration was the coin of their brains. Authors! What claim has the adopter of a trade-mark to be considered an author? He may adopt any symbol, the sign of any thing in heaven above or in the earth beneath; it may be a representation of a real object, or it may be entirely fabulous. It does not require any genius for one to call a newspaper by the name of sun, moon, or star. The name of a newspaper is a sign to arrest attention, as it It points to something else. The heading is not offered for sale. Its office is simply to inform the public that the paper on which it is printed is the Herald, the Sun, or the Globe, as the case may be. The public care not a straw whether the heading be ornamental or plain; for the advantage in buying it is the intelligence, the editorials, the advertisements. The purchaser does not glance at the heading, the title, the name, except to be assured that he is getting the newspaper of his 1 Story on the Constitution, vol. ii. § 1152. catches the eye. choice. He takes no delight in gazing upon the name or heading as a work of art. But the copyrighted article is the thing that is sold. The book, the map, the dramatic composition, the engraving, cut, photograph, &c., is the thing bought. The name of a newspaper is but the guide to the thing. In the case of the heading of a newspaper, if its owner should elect to abandon it after a certain period, what value would he render to the public? Nothing. If considered as a work of art, what would be the measure of damages for infringement? 1 As a penal law, the statute must be strictly construed. Again, it would be absurd to suppose that Congress intended to include such a thing, from the requirement of deposit in the mail before publication,2 a description of the article, and within ten days after publication the transmission of two copies to enrich the library of the nation. The heading of the " Herald" as a work of art! We cannot conceive a mere newspaper heading to be a subject for copyright. § 111. In Stephens v. De Conto, the judge mentioned "the subject of a patent," meaning, doubtless, a design-patent. Is such a heading the subject of a patent? Examine: Mr. Upton, in his work on Trade-marks,3 has taken the correct position in the construction of the Act of 1842, for patents for designs. The language, " any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted or cast, or otherwise fixed on any article of manufacture," &c., has been relied on as conferring a right to an exclusive privilege that may be made to serve the purpose of designating articles of merchandise. He says: "It is quite obvious that such was not the purpose of the law; but, on the contrary, it was manifestly intended that the design for which such protection was provided, should constitute a portion of the manufactured article, either as an ornamental adjunct, or as controlling its figure or proportions, by no means as a mere 1 See sec. 100 of Copyright Law of 1870. 2 Sec. 90 same act. name or designation by which to identify or distinguish the article." He maintains that the right thus acquired is in no sense a trade-mark property. We must agree with him that the construction sometimes given to that act was quite unwarrantable. The design that is patentable is æsthetic. The mark of manufactures or of commerce is not essentially a thing of taste. The abstract symbol has no intrinsic value. The value is in the article to which it is affixed. § 112. The Supreme Court of the United States in its first trade-mark case, in 1872, said: "Property in a trade-mark, or rather in the use of a trade-mark or name, has very little analogy to that which exists in copyrights, or in patents for inventions." 2 § 113. In Swift v. Dey, Robertson, Ch. J., said: "A patented design may be adopted as a trade-mark, by consent of the patentee, and thereby its use by others for the same purpose prevented. There is no rule, however, which makes the test of the infringement of such rights the same in both cases. The defendants may be liable in both the Federal and State courts: in the former, for imitating the design; in the latter, for passing off, by means of such design, spurious wares as being the plaintiff's: and the cause of action would clearly not be the same." § 114. Paxson, J., in The Dixon Crucible Co. v. Guggenheim,1 expressed an opinion that "the name of a newspaper is a trade-mark, as much so as a label stamped upon a bale of muslin," although it is true that that was not the exact question before the court. § 115. From the foregoing train of reasoning, we deduce this conclusion: A newspaper, being a vendible article, is as much a matter of merchandise as any thing can be. It would 1 See case of Whyte, Comr's Dec., 1871, p. 374. 2 President, Managers, &c., of Del. & Hudson Canal Co. v. Clark, Patent Office Official Gazette, March 26, 1872. 8 4 Robertson, 611. 3 Am. Law Times R. (St.) 288, and 2 Brewster, 321. not be bought unless it contained or bore an authenticating sign. That sign is its name. Each issue may be ephemeral, and be at once consumed; but the name, its emblem, is permanent and invariable, and is the stamp of genuineness. We see, therefore, that the Office was unquestionably right in admitting the name of a newspaper to registration as a trademark.1 § 116. Trade-marks on Books. Can printed books be protected by trade-marks? Yes, as mere merchandise; no, as literary productions. They are articles of manufacture, and may bear a particular mark to designate their author, or the merchant who sells them. Sometimes they are impressed with a peculiar symbol, to indicate the place of sale: but not so much so as in preceding ages, especially the sixteenth and seventeenth centuries, and the earlier portion of the last; for then every shop had its emblematic sign, as a dolphin, a lion, the king, &c., and a representation of that sign indicated the place of sale quite as well as could the name of the merchant or publisher. The mark of the dolphin, for example, would satisfy the purchaser, for he would reflect that he had always obtained correct editions of books at that place the Dolphin. In Savary's "Dictionnaire Universel de Commerce,' "2 we find that in France, and probably in other European countries, the legalized mark of a bookseller was an image placed by him under the title of a book, or on the first page thereof. This establishes the fact that books were regarded as proper objects for the reception of trade-marks. § 117. But it must be borne in mind that it is as merchandise merely, and not as intellectual creations, that books are protected by the mark of commerce. Why so? Because a book, as such, has its protection under the copyright law. If printed, ample remedy is afforded by the copyright law of July 8, 1870. 1 F. C. Barksdale, No. 424 (" Our Society "). 2 Copenhagen, 1761, title Marque. (Under this head may be found much interesting information in regard to the compulsory use of trade-marks in the various branches of manufactures.) That is the security which the Constitution and the statute provide for infringement upon works of literary genius, even though the pirate change the title of the book, and, as it were, hoist a false flag. It is the contents of the book that would be copied, and not its emblem, title, or mark. § 118. There seems to be no sufficient reason why the title of a book may not be deemed a valid trade-mark; e. g., when, two centuries ago, in England, the five Presbyterian divines (Stephen Marshal, Edward Calamy, Thomas Young, Matthew Newcomen, and William Spurstow) combined the initials of their names, which made the word SMECTYMNU-US, and adopted it as their joint signature, they had a valid trademark if they had chosen to use it as such. It was good for the publication bearing that name, and would be entitled to protection as a trade-mark for any books the owners of the newly coined word might offer for sale. § 119. Here is a case which is usually classified with trademark cases; but, if we keenly scrutinize and analyze for ourselves, we may conclude that, although of the nature of a trade-mark, the thing in controversy has but little claim to the name. We examine Williams v. Johnson, before the general term of the Superior Court of the City of New York, in 1857. Under the principle that a rose by any other name may smell as sweet, the court contented itself with rendering substantial justice, without caring about too much nicety in terms. We will soon be able to answer this pertinent question: Is not this an instance of unfair competition in trade, by means of false labels? A wrong was done. Let us try to name it. § 120. The plaintiff alleged that, in or about the year 1845, he and his brothers were manufacturers of soap at Manchester, Conn., and made a particular kind of soap, to which, in order to identify it as their manufacture, they gave the name of "GENUINE YANKEE SOAP." It was made in cakes of about two inches square, each cake covered with tin-foil; upon one side 1 2 Bos. 1. |