condition of the pro*vision was performed, | nished," would be open to dispute and the but both the lower courts have found that it was, and we concur in their judgment. The condition of the provision, then, having been performed, we come to its meaning, the Bliss Company contending that the device must be of the invention of the United States, and the latter contending that it need only be "furnished" by the United States. charge of being anticipated, already in existence among the things available to the company as "public property and not the property of the government"-"a matter of public knowledge and not a secret." And the government could not even fortify itself by the presumptions of a patent. To have done so would have been to break the seal of secrecy and relieve the company from the obligations imposed by the contract. To this contention the Bliss Company is driven to get rid of the Davison patent, the design for which was furnished the company by the United States. Counsel say: The Bliss Company's contention in its detail is somewhat difficult to state concisely. It rests as much in implication as in expression. It is said that the restrictive clause "applies only to a 'device the design for which is furnished by the government'" and "expressly and clearly excludes ideas, methods or principles." And it is further urged that "To furnish a design, it is necessary to furnish something concrete. A device is also something *concrete. One cannot accept an idea." And further: "The issuance of this patent, therefore, beselect-came an act of the Navy Department. Thus the government through the same department by which it entered into the several contracts with the defendant [the company], caused the secret of the balanced turbine to be laid open to the public." To support these declarations legal and other definitions are adduced. One is ed from Armour Packing Co. v. United States, 209 U. S. 56, 28 Sup. Ct. 428, 52 L. Ed. 681, which explains a device to be "a thing devised or formed by design, a contrivance, an invention." It is hence asserted that the United States did not comply with these definitional requirements-indeed, from the state of the art, could not; and therefore could not impose secrecy upon the Bliss Company. The tangibility of the definitions and the arguments based upon them are not very clear nor what purpose they tend to establish. The company asserts a right to employ the principle of propulsion and this principle it asserts to be to quote counsel-"the balancing of rotary bodies analogous to turbines rotating in opposite directions and of equal speeds for the purpose of eliminating gyroscopic effect," and that it was "long prior to 1906 [the first contract was made in 1905] a matter of common knowledge and known to the defendant" (the company); and again: "The balanced turbine principle was public property and not the property of the government. It was a matter of public knowledge and not a secret." Therefore, as we have said, the contention is that it was not within the prohibition of the contracts. Immediately it may be asked: This being the condition, of what value was the restrictive clause to the government? Surely the government sought to secure something valuable and practical, and yet it was apparently only the promise of words never to have effective realization. Instead of security the government got a controversy. Anything it might offer or suggest or, to use the word of the contract, "fur "Assuming that the particular design of a balanced turbine produced by Davison was a secret, it lost every attribute of the secret upon the issuance by the United States government of letters patent to Davison." to be treated as confidential by the parties of this contract, it being understood, however, that nothing in this clause shall be construed as depriving the party of the first part of the right to make and sell such torpedoes to any other party or government whatsoever, except as limited by clause twentieth of this contract.'" And, besides, it is said that the government "tacitly permitted Davison, one of its of ficers and subject to its discipline, to assign" to the company "foreign patents for the device in issue"; and that therefore "it cannot now successfully contend that its design is within the restrictive clause." But this gives an exaggerated effect of publicity to a patent and cannot dispense with the explicit obligation of the restrictive clause. Indeed, we may repeat, Of what avail was the restrictive clause to the government under the contentions of the company? It was assured of nothing but opposition and litigation. We may cite in further illustration of this that the Bliss Company asserts that the Davison device was without novelty in the field of "opposite revolving turbines" (another name for a balanced turbine) and that all he did was to take a "design of unbalanced turbine shown" in a prior patent "and reverse one of the turbine wheels with the incidental and necessary change in the of this gearing is what occupied Lieutenant gearing." The assertion is that "the design Davison's time and thought." We *may say that we concur with the lower courts and think the patent is not so limited. The Bliss Company thought well enough of it to buy its foreign rights. The several contentions of the company are but fragments of the broader one that available to the company practical devices there were in the world's knowledge and as well as principles of operation which precluded a demand of secrecy by the government and which left the company free to use. or exhibit or sell to anybody torpedoes embodying them, the final and dominant contention being that the government's reservation was only of inventions, inventions, however, undisclosed, patentable but not patented. | Regulation of Air, that written notice was Yet the word of the contract is "furnished," not given the company as required by the not invented, and the words are of differ- restrictive clause. The assertion is that ent significance. To invent means to create; what was done by the government was *nothto furnish means to supply. And the differ- ing but suggestions, first verbal, and then ence was too important, too pertinent to the by letter, but not accompanied by "blueprints purpose to have been overlooked-indeed, of design." 2 The objection is based on the must have been deliberately contemplated contention already referred to that a device to achieve the object of the parties. The or design must be something concrete or, it government in its situation, considering the is now said, if not that, "it at least imports use of torpedoes and the uncertainty against something as to dimensions, size, shape, whom to be used, would want to avail itself weight, etc., from which a device could be of the whole universe of things then exist- constructed." The objection *is hypercritical▾ ing or that might be brought into existence, and we are somewhat surprised at it. There in whatever way or combination it could. was no uncertainty in the government's deIt is easy to believe that an arrangement of mand and no misunderstanding of it. There old devices might have value. And secrecy were discussions concerning the practical was an especial object, as far as it could be means of using it, and it was testified that maintained and for such length of time as "the sole question practically reducing itit could be maintained. The fact and the self to whether or not they had sufficient time might in instances be critical and de- space to apply this design or principle." terminative of a decisive result. The govern- And the design was subsequently worked out ment considered the provision important to by the employés of the company. The obinsert in the contract of 1905 and to repeat jection was rested on other grounds, and it in every subsequent contract, to and includ- was rightfully dealt with by the Circuit ing that of 1912, and to disregard the plea Court of Appeals. of the company for some relaxation of it to accommodate the company's interests. There was some relaxation in 1912 and 1913, but the confidential relation of the parties was emphasized as we have seen. This was the simple situation. It is free from the tangle and perplexities of the company's contentions. It gives use to the restrictive clause, directness of right and remedy, not dependent upon explorations into the prior art or the delays and termination of lawsuits. These observations apply to other parts of the torpedo as well as to the balanced turbine. The remarks of the Circuit Court of Appeals are pertinent. The court said: [3] The same objection is not made as to the superheater and the ball bearings. It is said of them that they are not used in the existing type of torpedo. As this is conced-ed by the government and as we do not agree with its assertion that the company "displays a disposition to violate its trust whenever it seems advantageous to do so," we think the decree should not include the devices. In other words, it should be modified The court hence directed the amendment of the decree of the District Court, "adding such a provision." [2] A rehearing was asked of the case, 229 Fed. 376, 143 C. C. A. 496. It was denied as to the balanced turbine and granted as to the other devices, that is, Double Regulation of Air, Ball Bearings for Gyroscope, and Inside Superheater. To the inclusion of these in the decree it is objected, as to the Double Bureau of Ordnance, Navy Department. improvement shown in the dynamometer tests of the Mark VII torpedo by the use of double regulating valves. "Throughout the entire record, in the contracts, correspondence and dealings of the parties, the importance of secrecy is everywhere manifest. The nature of the services rendered was such that secrecy might almost be implied. It is difficult to imagine a nation giving to one of its citizens contracts to manufacture implements necessary to the national defense and permitting that citizen to disclose the construction of such implement or sell it to another nation. The very nature of the service makes the construction urged by the defendant untenable. We are of the opinion, therefore, that the injunc-furnished the E. W. Bliss Company by the Bureau's tion should include all designs, drawings, plans letter No. 25698/92 (G) of January 4, 1913. and specifications used by the defendant in making the Bliss-Leavitt torpedo for the government which were approved by the Ordnance Bureau, notice of which was given to the Bliss Company pursuant to the provisions of Clauses 19 and 20 of the contracts in question." 3. The Bliss Company had been furnished verbally with the idea and the fact that its value had been established by actual trials. This was also 4. In view of the above the Bureau requests that you will note for record that the double regulating principle has been submitted by the Bureau, and that this principle of any device embodying the same falls under the provisions of Clause 20 of the contracts now existing. 2. This plan or idea of double regulation was first submitted to the Bureau by a letter from Lieut. E. Frederick, then Assistant Inspector of Ordnance at Your works, dated March 9, 1911, which was receiv ed and filled in this office on or about March 15, 1911, and the value of the invention was successfully established by the actual tests at the Naval Torpedo Station, Newport, R. I. 5. While the Bureau has no actual blue prints of design it has on record cards and certain data ob tained by experiments at the Torpedo Station which the Bureau will be pleased to furnish the E. W. Bliss Company for their information if they so desire and will request it. 6. The Bureau again desires to express its pleasure in noting the improvement in the dynamometer tests due to the double regulation and the change in angle spray which was introduced at the suggestion of the Bureau's inspectors at your works. Respectfully, N. C. Twining, Chief of Bureau. E. W. Bliss Co., Brooklyn, N. Y. (Through Inspector of Ordnance.) *105 to exclude them, without prejudice, however, [ Such occupancy and use constituted a most to the government's right to obtain an in- important consideration and were rightly junction against their disclosure upon proper expected to yield larger public benefits than proof of an intention to use the devices in the small required payment of one dollar proceedings supplemental to this action or and a quarter per acre. in an independent action. Hitchman Coal & Coke Co. v. Mitchell, 245 U. S. 229, 262, 38 Sup. Ct. 65, 62 L. Ed. 260, L. R. A. 191SC, 497, Ann. Cas. 1918B, 461. The decree is modified as stated, and, as modified, affirmed. Affirmed. (248 U. S. 104) The CHIEF JUSTICE dissents. Plaintiff in error made preliminary homeMr. Justice McREYNOLDS took no part state of Idaho August 6, 1903; submitted stead entry of designated land within the in the consideration or decision of the case. final proofs October 4, 1909; obtained *final receipt and certificate November 12, 1909; final patent issued August 26, 1912. In 1914 two judgments were obtained Decided Dec. 9, against him; the first upon indebtedness incurred prior to November 12, 1909; the second upon debts contracted subsequent to that date and prior to patent. Executions were issued and levied upon the homestead; and thereupon the original proceeding was begun to declare asserted liens invalid and a cloud upon the title. The court below held the first judgment unenforceable against the land since it represented indebtedness which accrued prior to final entry. It further held the second judgment could be so enforced as it was based upon debts contracted after final entry, at which time the homesteader became legally entitled to his patent. 28 Idaho, 376, 154 Pac. 977. The language of section 4 is clear and we find no adequate reason for thinking that it fails precisely to express the lawmaker's intention. RUDDY v. ROSSI. (Submitted Nov. 13, 1918. 1918.) No. 17. 1. PUBLIC LANDS 7 LANDS OF United STATES-POWER OF CONGRESS. Under Const. U. S. art. 4, § 3, cl. 2, Congress has power to dispose of public lands of the United States, and they may be leased, sold, or given away on such terms and conditions as the public interests require. 2. PUBLIC LANDS 140 EXEMPTION OF HOMESTEAD LANDS FROM LIABILITY FOR DEBTS. Under Const. U. S. art. 4, § 3, cl. 2, Congress, in exercise of its discretion in disposal of public lands, had power, by Rev. St. § 2296 (Comp. St. 1916, § 4551), the fourth section of the Homestead Act, to restrict alienation of homestead lands after conveyance by United States in fee simple, by providing no such lands shall become liable to satisfaction of debts contracted prior to issuance of patent. Mr. Justice Holmes, dissenting. In Error to the Supreme Court of the State of Idaho. Action by Charles F. Ruddy against Herman J. Rossi. From a judgment for plaintiff, defendant appealed to the Supreme Court of Idaho, which modified and affirmed (28 Idaho, 376, 154 Pac. 977), and plaintiff brings error. Reversed, and cause remanded. Decision of this cause requires us to consider the meaning and validity of section 4 of the Act (R. S. § 2296 [Comp. St. 1916, § 4551]), which provides: Messrs. Charles E. Miller and Carlton Fox, both of Wallace, Idaho, for plaintiff in er ror. "No lands acquired under the provisions of this Act shall in any event become liable to the satisfaction of any debt or debts contracted prior to the issuing of the patent therefor." Did Congress have power to restrict alienation of homestead lands after conveyance by the United States in fee simple? This which we are not disposed to minimize. In question undoubtedly presents difficulties Wright v. Morgan, 191 U. S. 55, 58, 24 Sup. Ct. 6, 48 L. Ed. 89, a similar point was suggested but not decided. [1] The Constitution (article 4, § 3, cl. 2) declares: "The Congress shall have power to dispose of and make all needful rules and regulations respecting the territory or other property belong *Mr. Justice MCREYNOLDS delivered the ing to the United States." opinion of the Court. By "An act to secure homesteads to actual settlers on the public domain," approved May 20, 1862 (12 Stat. c. 75, p. 392), Congress prescribed the conditions under which citizens could acquire unappropriated public lands in tracts of not exceeding 160 acres. A manifest purpose was to induce settlement upon and cultivation of these lands by those who, five years after proper entry, would become owners in fee through issuance of patents. The great end in view was to convert waste places into permanent homes. And it is settled that Congress has plenary power to dispose of public lands. United States v. Gratiot et al., 14 Pet. 526, 537 (10 L. Ed. 573). They may be leased, sold or given away upon such terms and conditions as the public interests require. Instead of granting fee simple titles with exemption from certain debts, long leases might have been made or conditional titles bestowed in such fashion as practically to protect homesteads from all indebtedness. "The sound construction of the Constitution must allow to the national Legislature that dis For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes *107 as any other land might be attached for a debt that Rossi had a right to collect, after the United States had left the premises. I ask myself what the United States has to do with that. There is no condition, no reserved right of reentry, no reversion in the United States, saved either under the Idaho law as any private grantor might save it, or by virtue of antecedent title. All interest of the United States as owner is at an end. It [2] Acting within its discretion, Congress is a stranger to the title. Even in case of determined that in order promptly to dis- an escheat the land would not go to it, but pose of public lands and bring about their would go to the State. Therefore the statute permanent occupation and development it must operate, if at all, purely by way of legwas proper to create the designated exemp-islation, not as a qualification of the grant. tion; and we are unable to say that the con- If section 2296 is construed to apply to this clusion was ill-founded or that the means case, there is simply the naked assumption of one sovereignty to impose its will after whatever jurisdiction or authority it had has ceased and the land has come fully under the jurisdiction of what for this purpose *is a different power. It is a pure attempt to regulate the alienability of land in Idaho by law, without regard to the will of Idaho, which we must assume on this record to authorize the levy if it is not prevented by an act of Congress occupying a paramount place. I believe that this Court never has gone farther in the way of sustaining legislation concerning land within a State than to uphold a law forbidding the enclosure of public lands, which little, if at all, exceeded the rights of a private owner, although it was construed to prevent the erection of fences upon the defendandants' own property manifestly for the sole purpose of enclosCamfield v. ing land of the United States. United States, 167 U. S. 518, 17 Sup. Ct. 864, 42 L. Ed. 260. At most it was a protection of the present interests of the United States under a title paramount to the State. On the other hand, it is said in Pollard v. Hagan, 3 How. 212, 224, 11 L. Ed. 565, that no power in the nature of municipal sovereignty can be exercised by the United States within a State; that such a power is repugnant to the Constitution. This case was referred to in Withers v. Buckley, 20 How. 84, 15 L. Ed. 816, and it was decided that the act of Congress authorizing the formation of the State of Mississippi and providing that the Mississippi River should be forever free "could have no effect to restrict the new State in My question is this: When land has left any of its attributes as an independent sovthe ownership and control of the United ereign government," and both these cases States and is part of the territory of a were cited upon this point with approval in State not different from any other privately Ward v. Race Horse, 163 U. S. 504, 511, 512, owned land within the jurisdiction and no 16 Sup. Ct. 1076, 41 L. Ed. 244. See also more subject to legislation on the part of the Shively v. Bowlby, 152 U. S. 1, 27, 14 Sup. United States than any other land, on what | Ct. 548, 38 L. Ed. 331. In Irvine v. Marshall, ground is a previous law of Congress sup- 20 How. 558, 15 L. Ed. 994, where it was held posed any longer to affect it in a way that that the laws of a territory abolishing cona subsequent one could not? This land was structive trusts were ineffectual to protect levied upon not on the assertion that any the holder of a certificate from the United lien upon it was acquired before the title States against the establishment of such a passed from the United States, but merely trust, it was said that "when the subject, cretion, with respect to the means by which the powers it confers are to be carried into execu tion, which will enable that body to perform the high duties assigned to it, in the manner most beneficial to the people. Let the end be legitimate, let it be within the scope of the Constitution, and all means which are appropriate, which are plainly adapted to that end, which are not prohibited, but consist with the letter and spirit of the Constitution, are constitutional." Me Culloch v. Maryland, 4 Wheat. 316, 421 (4 L. Ed. 579). were either prohibited or not appropriate to the adequate performance of the high duties which the Legislature owed to the pub lic. The judgment of the court below must be reversed and the cause remanded for further proceedings not inconsistent with this opinion. Reversed and remanded. Mr. Justice HOLMES (dissenting). This case involves a question of theory that may be important and I think it desirable to state the considerations that make me doubt. The facts needing to be mentioned are few. On August 26, 1912, the United States conveyed land in Idaho to Ruddy in fee simple, in pur suance of a homestead entry by Ruddy on August 6, 1903, final proof on October 4, 1909, and final receipt of the purchase price on November 12, 1909. In September 1912, after the conveyance, Rossi began suits against Ruddy, attaching this land, and in June, 1914, levied executions upon the same. The debts for which the *suits were brought were incurred before the issue of the patent and the present proceeding is to prevent Rossi from selling the land to satisfy the judgments. The question arises under Rev. St. § 2296 (Comp. St. 1916, § 4551), providing that no lands acquired under that chapter shall in any event become liable to the satisfaction of any debt contracted prior to the issuing of the patent therefor. The Supreme Court of Idaho narrowed the issue to the case of debts contracted after final proof, but that distinction is not important to the difficulty in my mind. *111 and all control over it, shall have passed | lence. When the Act of 1862, now Rev. St. from the United States, and have become § 2296, was passed the United States owned vested in a citizen or resident of the terri- territories to which it could be applied with tory, then indeed the territorial regulations full scope. Irvine v. Marshall, 20 How. 558, may operate upon it," and *later in the deci- | 15 L. Ed. 994. The greater part of the public sion there is cited a passage from Wilcox v. land was in those territories. Without stopJackson, 13 Pet. 498, 517, 10 L. Ed. 264, to ping to suggest other possibilities of conthe same effect-a passage also cited and re- struction this fact is enough to explain and lied upon by the four justices who dissented give validity to the Act when passed. There and held that the territorial laws governed is no need to import to it the intent to aneven them. It has been repeated ever since. ticipate the future and to reach the States McCune v. Essig, 199 U. S. 382, 390, 26 Sup. that were still in the bosom of time. Ct. 78, 50 L. Ed. 237; Buchser v. Buchser, 231 U. S. 157, 161, 34 Sup. Ct. 46, 58 L. Ed. 166. Of course the United States has power to choose appropriate means for exercising the authority given to it by the Constitution. But I see no sufficient ground for extending that authority to a case like this. It is not the business of the United States to determine the policy to be pursued concerning privately owned land within a State. According to all cases in this Court, so far as I know, when the patent issued its authority was at an end. Coming to the precise issue, the question of the power of the United States to restrict alienation of land within a State after it had conveyed the land in fee was left open in Wright v. Morgan, 191 U. S. 55, 58, 24 Sup. Ct. 6, 48 L. Ed. 89, but it was said that the clearest expression would be necessary before it would be admitted that such a restriction was imposed. In Buchser v. Buchser, 231 U. S. 157, 34 Sup. Ct. 46, 58 L. Ed. 166, it was held that the laws of the United States did not prevent homestead land becoming community property at the moment that title was acquired, and it was said that, the acquisition under the United States law being complete, that law had released its control. The statement in Wilcox v. Jackson, supra, that when the title has passed the land "like all other property in the State is subject to state legislation" was repeated. In Alabama v. Schmidt, 232 U. S. 168, 34 Sup. Ct. 301, 58 L. Ed. 555, following Cooper v. Roberts, 18 How. 173, 15 L. Ed. 338, it It is said that where a statute is susceptible of two constructions, by one of which grave constitutional *questions arise and by the other of which they are avoided, our duty is to adopt the latter. United States v. Delaware & Hudson Co., 213 U. S. 366, 408, 29 Sup. Ct. 527, 53 L. Ed. 836. I am aware that this principle like some others more often is invoked in aid of a conclusion reached on other grounds than made itself the basis of decision, but it seems to me that it properly should govern here. It might without vio I am aware that my doubts are contrary to manifest destiny and to a number of decisions in the State Courts. I know also that when common understanding and practice have established a way it is a waste of time to wander in bypaths of logic. But as I have a real difficulty in understanding how the Congressional restriction is held to govern this case a question which nothing that I have heard as yet appears to me to answerI think it worth while to mention my misgivings, if only to show that they have been considered and are not shared. (248 U. S. 90) UNITED DRUG CO. v. THEODORE RECTANUS CO. (Argued March 12 and 13, 1918. Decided Dec. 9, 1918.) No. 27. COURTS 382(1) CERTIORARI AND APPEAL DISMISSAL OF APPEAL-STATUTE. Under Judicial Code, § 128, as amended by Act Jan. 28, 1915, § 2 (Comp. St. 1916, § 1120), where plaintiff in trade-mark infringement suit was allowed appeal from decree of Circuit Court of Appeals, and brought certiorari, and pursuant to stipulation, transcript of record filed for purposes of appeal was treated as return to writ, termined on writ of certiorari. appeal must be dismissed, and cause will be de 2. TRADE-MARKS AND TRADE-NAMES 31CHARACTER OF RIGHT. A trade-mark right is not a right in gross, or at large, like a statutory copyright or a patbeing but a part of the broader law of unfair ent for an invention, the law of trade-marks competition, for the right to a particular mark grows out of its use in trade, not its mere adoption, and the owner of a trade-mark may not, a negative and merely prohibitive use of it like the proprietor of a patented invention, make as a monopoly. For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes |
