error.

And it is further ordered, adjudged and eted June 1, 1903, and the petition for cerdecreed by the court that the commissioners

tiorari Aled February 17, 1905. heretofore appointed, namely, Alfred Hazlett, Esq., and John W. Halliburton, Esq.,

[No. 50.] be, and they are hereby, directed to establish, or cause to be established, under their direc- Argued and submitted March 16, 1905. De

cided April 24, 1905. tion, permanent monuments marking said boundary line between the state of Missouri and the state of Nebraska, as shown by said I NERROR to the United States Circuit aforesaid surveys, and that said commission

Court of Appeals for the Fifth Circuit to ers establish such permanent monuments up

review a judgment which affirmed a judg. on said boundary line as may in their opinion ment of the Circuit Court for the Eastern be necessary for permanently marking and District of Louisiana in favor of defendant establishing the same, and that they make in a petitory action for real property, origa report to this court of their acts and do- inally begun in the District Court of St. ings therein, and that said report contain a Mary's Parish, in the state of Louisiana. full and complete description of said bound- Dismissed for want of jurisdiction. Also a ary line and the monuments thereon estab- PETITION FOR CERTIORARI to review lished. And that in the execution of this

the same judgment. Denied. decree said commissioners are hereby au

See same case below, 53 C. C. A. 31, 116

Fed. 251. thorized to employ such surveyors and other assistants, and procure such material as may

The facts are stated in the opinion.

Messrs. Branch K. Miller and David be necessary in the establishment of said permanent monuments marking said boundary Todd for plaintiff's, in error. line, in accordance with the decree of this

Messrs. Edgar H. Farrar, B. F. Jonas, court.

and E. B. Krattschnitt for defendant in And it is further ordered that said commissioners be paid for their services herein such compensation as may be agreed upon

Mr. Chief Justice Fuller delivered the by the respective parties to this 'suit and opinion of the court: said commissioners, and if the parties to this This was a petitory action for real propsuit and said commissioners are unable to erty, or an action of ejectment, brought by agree upon said compensation, such com- the heirs of Gonsoulin, plaintiffs in error, pensation shall be awarded to said commis against the Gulf Company, defendant in ersioners as in the opinion of this court, upon ror, in the district court of St. Mary's parthe filing of the final report by said com- ish, Louisiana, where the land was situated. missioners, may seem proper.

The petition alleged that a grant or concesIt is further ordered that said commission by the Spanish government was origisioners make said final report of their acts nally made to Dubuclet, St. Clair, and Gonand doings in the premises to this court on soulin in 1783, and that the interests of or before the 15th day of May, 1905.

Dubuclet and St. Clair were conveyed to the March 6, 1905.

heirs of Gonsoulin after 1808.

That the United States government issued

a patent to the heirs of Gonsoulin, and that (198 U. S. 115)

petitioners' "claim by said grant and concesFERNAND BONIN, Valcour Bonin, et al., sion covering said lands dates back to the Puffs. in Err.,

year 1783 or thereabouts, and said conces

sion was recognized and confirmed by the GULF COMPANY.

United States government after proper and

legal surveys had defined the boundaries and Appeal-review of judgment of circuit court segregated said grants.

That said lands were “now in the possesof appeals-certiorari.

sion of, and illegally detained and held by, 1. The mere assertion of title under a pat- the Gulf Company, a body corporate, organ

ent from the United States presents no quesized under the laws of the state of New Jertion which, of itself, deprives the judgment sey, domiciled in the state of New Jersey." of the circuit court of appeals, in a petitory

The Gulf Company filed its petition for action for real property, of that finality which exists if the jurisdiction of the circuit court the removal of the cause, alleging that it

depends solely upon diversity of citizenship. was, at the time the suit was brought, and 2. Certiorari to a circuit court of appeals will when the petition was filed, a citizen of New

not be granted upon dismissing, for lack of Jersey, and that the heirs of Gonsoulin were Jurisdiction, a writ of error to that court, citizens of the state of Louisiana. The cause where the judgment sought to be reviewed was entered May 27, 1902, the writ of error

was removed accordingly, and plaintiffs filed was allowed May 22, 1903, the cause dock.' in the circuit court an amended and supple

0.

V.

of itself, conferred jurisdiction, Florida C ONWRIT and Cross Writ of Certiorari to

(198 U. S. 118) mental petition, stating that all the plain- | HOWE SCALE COMPANY OF 1886 and tiffs were citizens of Louisiana, and that de- Fay-Sholes Company, Petitioners, fendant was a citizen of New Jersey, and praying that petitioners "be recognized as

WYCKOFF, SEAMANS, & BENEDICT. the true and lawful owners of the said property described in the patent, letters patent, Unfair competition—use of family name. or grant, issued to Dautrieve Dubuclet, Benoist de St. Clair and François Gonsoulin by 1. Unfair competition does not arise out of the United States of America, on August

the use in a corporate name of the surnames 21st, 1878," and that they be put in posses

of one or more of the incorporators, where

such use by the individuals themselves or sion.

in a partnership would not be open to that Plaintiffs pitched their title solely on this charge.* patent. Defendant, for peremptory excep- A manufacturer of typewriters under the tion, pleaded the prescription of ten years,

names “Remington” and “Remington Stand. the prescription of thirty years, and res

ard" is not entitled to protection against the

adoption by persons bearing respectively the judicata.

surnames “Remington” and “Sholes” of the On the trial the circuit court charged the

name “Remington-Sholes” for their typewritjury to find for defendant on the pleas of ers, and the giving of that name to the corprescription, and nonsuited defendant on the poration formed for their manufacture and plea of res judicata. Verdict was returned,

sale, where the only confusion in the minds

of the public as to the origin of the product and judgment entered accordingly, and the

results from the similarity in names, and case having been carried to the circuit court

not from the manner of their use.* of appeals for the fifth circuit, the judgment was affirmed. 53 C. C. A. 31, 116 Fed. 251.

[No. 130.] The jurisdiction of the circuit court rested alone on diversity of citizenship. The as- Argued January 16, 17, 1905. Decided sertion of title under a patent from the

April 24, 1905. United States presented no question which,

.

C.

the United & P. R. Co. v. Bell, 176 U. S. 328, 44 L. ed. 490, 20 Sup. Ct. Rep. 399. No dispute or peals for the Second Circuit to review a decontroversy as to the effect or construction cree which reversed a decree of the Circuit of the Constitution, or of any law or treaty Court for the District of Vermont enjoining of the United States, on which the result the use of the designation "Remington” or depended, appeared by the record to have "Rem-Sho” as the name or part of the name been really and substantially involved, so of typewriting machines, and remanded the that it could be successfully contended that cause with instructions to decree in favor jurisdiction was invoked on the ground that of complainant only as to the name “Remthe suit arose under Constitution, law, or ington.” Decrees of both courts below retreaty. Arbuckle v. Blackburn, 191 U. s. versed, and the cause remanded to the Cir405, 48 L. ed. 239, 24 Sup. Ct. Rep. 148.

cuit Court, with directions to dismiss the On the pleadings and evidence, the ques

bill. tions in the circuit court were questions of

See same case below, 58 C. C. A. 510, 122 prescription and of res judicata; in the cir- Fed. 348. cuit court of appeals, of prescription; and plaintiff's' petitions did not assert, in legal Statement by Mr. Chief Justice Fuller: and logical form, or at all, the existence of This was a bill exhibited, in September, a real controversy, in itself, constituting an 1898, by Wyckoff, Seamans, & Benedict, a independent ground of jurisdiction.

corporation of New York, in the circuit The judgment of the circuit court of ap- court of the United States for the district of peals was, therefore, final, and the writ of Vermont, against the Howe Scale Company error must be dismissed.

of 1886, a corporation of Vermont, alleging The judgment was entered in the circuit that complainant had been for many years court of appeals May 27, 1902; this writ of engaged in the manufacture and sale of typeerror was allowed May 22, 1903; and the writing machines known in the markets and case was docketed here June 1, 1903.

to the trade and public, and referred to, Plaintiffs in error filed a petition for cer- identified, offered for sale, and sold as the tiorari herein, February 17, 1905, which was “Remington typewriter,” and the "Remingsubmitted February 27, and its consideration ton Standard typewriter,” and that the postponed to the hearing on the merits. In words “Remington” and “Remington Standour opinion, that writ should not be granted. ard” had been registered in the Patent OfAyres v. Polsdorfer, 187 U. S. 595, 47 L. ed. fice under the act of Congress; and charging 317, 23 Sup. Ct. Rep. 196.

“Remington-Sholes Company" and the desig- reversed with instructions to dismiss the bill. nations "Remington-Sholes," "Rem-Sho" 58 C. C. A. 510, 122 Fed. 348. and "Remington-Sholes Company,” in adver- It appeared that the mandate of the cir. tising for sale, offering for sale, and selling cuit court of appeals was issued April 22, typewriting machines; and praying for an 1903, and that the circuit court entered a accounting, and for an injunction restrain- final decree, June 22, 1903, enjoining the use ing defendant from advertising or offering of the word "Remington,” and also that after for sale or selling typewriting machines the original decree of the circuit court the manufactured by the “Remington-Sholes Remington-Sholes Company changed its corCompany," bearing the name “Remington” porate name to that of Fay-Sholes Company, or "Remington-Sholes” or “Rem-Sho” or and ceased to make its machines marked "Remington-Sholes Company," and from ad with the registered trademark "Rem-Sho," vertising or offering for sale or selling any and with the inscription "Remington-Smoles such machines under said designation or un- Company, Mgrs., Chicago.” der any designation of which the name It also appeared that in October, 1901, “Remington” was a part.

complainant filed its bill in the circuit court Defendant was the sales agent of the of the United States for the northern dis“Remington-Sholes Company," a corporation trict of Illinois against the Remingtonof Illinois, and was engaged in selling the Sholes Company, for alleged unfair trade typewriting machines called the "Remington-competition, and that, after answers filed, Sholes" or "Rem-Sho" typewriter, which an order was entered staying proceedings were manufactured by the Illinois corporation until the determination of this cause, and at Chicago. The right to use those designa- providing that if this cause resulted in favor tions in the way they were used was asserted of complainant, that cause should be sent at by the defense, of which the Remington-once to an accounting. Sholes Company, and subsequently the Fay- On petition of the Howe Scale Company of Sholes Company, had charge. The word 1886, and the Fay-Sholes Company, filed Oc“Rem-Sho” was alleged to have been regis- tober 22, 1903, and on petition of Wyckoff, tered in the Patent Office as a trademark. Seamans, & Benedict, filed December 21,

The circuit court found that defendant's 1903, writ and cross writ of certiorari were use of the name “Remington” was an unjus- granted. tifiable invasion of complainant's right to For some years prior to 1860 E. Remingthe use of that name, and entered a decree, ton and his three sons were engaged at Ilion, August 14, 1901, denying an account for New York, in the manufacture of firearms gains and profits, without prejudice to the under the firm name of E. Remington & Sons. recovery thereof from the Remington-Sholes The father died in 1863, and in 1865 the sons, Company; and perpetually enjoining the use who had continued the business, organized of the designation "Remington," or "Rem- the corporation E. Remington & Sons under Sho," as the name or part of the name of the laws of New York. About 1866 E. Remany typewriting machine whatsoever manu-ington & Sons produced a breech-loading rifle factured by the "Remington-Sholes Com- that obtained great vogue throughout the pany,” or by defendant, or any person or con- world, and was and is known as "the Remcern, and from selling, offering, or advertisington rifle.” The “Remington sewing maing for sale in any manner, typewriting machine” and other machines were also manuchines so manufactured “under the name of factured and sold. or as 'Remington Sholes' or 'Rem-Sho,' or by In 1873 E. Remington & Sons began the any designation of which the word 'Reming- manufacture of a tpyewriting machine, the ton' or the abbreviation 'Rem’ shall consti- most important features of which were intute a part.” 110 Fed. 520.

vented and patented by Christopher Latham The case was carried by appeal to the cir- Sholes. It was the pioneer writing machine, cuit court of appeals for the second circuit, and called “the Typewriter,” and “the Sholes and was there heard before Circuit Judges & Glidden typewriter,” and in 1880 the Wallace, Lacombe, and Coxe. April 20, names “Remington” and “Remington Stand1903, the decree was reversed, without costs, ard” were used instead, as they have since and the cause remanded “with instructions been continuously. to decree in favor of complainant only as to One of complainant's witnesses testified the name 'Remington.'” Lacombe, J., de- that the typewriter was called “Remington” livered an opinion in support of that de "for the reason that the name Remington cree, Coxe, J., concurring in the conclusion was known the world over, owing to their because "unable to distinguish this cause building guns for foreign governments, buildfrom R. W. Rogers Co. v. Wm. Rogers Mfg. ing sewing machines, and having one of the Co. 17 C. C. A. 576, 35 U. S. App. 843, 70 largest manufacturing works in the world." Fed. 1017;" Wallace, J., dissented, holding In March, 1886, the typewriter branch of the that the decree of the circuit court should be 'business of E. Remington & Sons was sold

9

to Messrs. Wyckoff, Seamans, & Benedict, | In the fall of 1896 the company had become and there was also transferred the exclusive so deeply indebted that it became necessary right to the name “Standard Remington to take steps to meet its obligations, and at Typewriter," by which name the assignment a meeting of the stockholders December 14, states the machines were generally known. 1896, it was resolved that the property and The assignment contained the express reser- assets be sold at public auction, the buyer to vation to E. Remington & Sons of the right have the privilege of using all or any part of to engage in the manufacture and sale of the company's corporate name. Thereupon typewriters at any time after ten years from Fay purchased in his own name, but as trusits date.

tee for himself and other stockholders, the Complainant's typewriting machines have whole of the assets of the company, together been for years conspicuously marked with with its good will, the exclusive right to the name "Remington” and with a large use its trademarks, etc., and for some months "Red Seal” trademark on the paper table carried on the business at the factory forand frame; the name and address "Reming- merly occupied by the Remington-Sholes ton Standard Typewriter, manufactured by Typewriter Company. The charter of that Wyckoff, Seamans, & Benedict, Ilion, N. Y., company was surrendered in April, 1897, and U. S. A.," on the cross bar in front of the the Remington-Sholes Company was incorkeyboard; the words and figures "No. 6 Rem- porated under the laws of Illinois, and purington Standard Typewriter No. 6” on the chased all the assets, good will, trademarks, front of the base, and the words “This ma- trade names, etc., theretofore belonging to chine is protected by 67 American and for- Fay and the Remington-Sholes Typewriter eign patents” on the back. “Remington” | Company. And the new company conand “Remington Standard” and the “Redtinued at the same factory and through the Seal” have all been registered by complain. same instrumentalities to manufacture and ant as trademarks.

sell its typewriters. It was stipulated that In 1892 Z. G. Sholes, a son of Christopher the common stock of the new company "was Latham Sholes, invented a typewriting ma-divided among the stockholders in keeping chine, and early in 1893 the Z. G. Sholes with the amounts of cash actually invested Company was organized under the laws of by them in the Remington-Sholes Typewriter Wisconsin for its manufacture, but the stock Company, and that the allotment of said of the company was never issued, and no common stock to said Franklin Remington machine was ever made or sold by it. Later was in keeping with such plan.” in the year Franklin and Carver Remington, The machines made and sold by the Remsons of Samuel Remington, formerly presi- ington-Sholes Typewriter Company were dent of the E. Remington & Sons corpora- plainly marked with the words "Remingtontion, bought a three-fourths interest in Sholes, Chicago.” After the new company Sholes' invention, Sholes retaining one entered on the business the trademark "Remfourth, and a like interest in the stock of Sho" was adopted (registered as a tradethe company, paying from eight to nine thou- mark October 19, 1907), and the machines sand dollars. They entered into a written were also marked on the cross bars with the agreement with Sholes, which provided, words "Remington-Sholes Company, Mfrs., among other things, that “no further, other, Chicago.” The Remington-Sholes Typewriter or different business of any kind or nature Company widely advertised that its mashall be transacted by said corporation or chine "was not the Remington Standard in its behalf, except that the same may be typewriter,” and the catalogues circulated by dissolved, in due form of law, as soon as the Remington-Sholes Company declared: practicable hereafter.” Franklin Remington "We state, then, emphatically that this comgave his entire time to the promotion of the pany has no connection whatever with that enterprise, and advanced for expenses from well-known and excellent machine, the Remsix to seven thousand dollars in addition to ington Standard typewriter, and caution posthe original investment of eight or nine thou- sible customers against confusing the 'Remsand. The name of the machine was subse. Sho' with that machine or any other.” quently changed by Sholes from “The Z. G.

Messrs. Austen G. Fox, George P. Sholes” to “The Remington-Sholes.” There

Fisher, Jr., James H. Peirce, and William after the Remingtons and Sholes induced Head and Fay of Chicago to furnish funds to Henry Dennis for the scale company et al.

Messrs. Edmund Wetmore, Henry D. manufacture the Remington-Sholes machine; Donnelly, William W. Dodge, Paul Armand a corporation organized in the spring itage, and Archibald Cox for Wyckoff, Seaof 1894 for its manufacture was designated

mans, & Benedict. the “Remington-Sholes Typewriter Company.” This company purchased tools and Mr. Chief Justice Fuller delivered the machinery, and its typewriting machines opinion of the court: were placed on the market in December, 1894, Referring to the Remington-Sholes Com. pany, it was unanimously held by the circuit | and similar instances are cases of damnum court of appeals: “We do not find in this absque injuria.” voluminous record sufficient evidence that In Singer Mfg. Co. v. June Mfg. Co. 163 defendant has itself done anything to pro-U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. mote confusion in the minds of the public, 1002, the rule is thus laid down by Mr. Jusexcept to use the name 'Remington on its tice White: machines and in its literature.”

“Although every one has the absolute Accepting that conclusion, it follows that right to use his own name honestly in his complainant's case must stand or fall on the own business, even though he may thereby possession of the exclusive right to the use incidentally interfere with and injure the of the name "Remington."

business of another having the same name. But it is well settled that a personal name In such case the inconvenience or loss to cannot be exclusively appropriated by any which those having a common right are subone as against others having a right to use jected is damnum absque injuria. But alit; and as the name “Remington” is an or- though he may thus use his name, he cannot dinary family surname, it was manifestly resort to any artifice, or do any act calcuincapable of exclusive appropriation as a lated to mislead the public as to the identity valid trademark, and its registration as such of the business, firm, or establishment, or of could not in itself give it validity. Brown the article produced by them, and thus proChemical Co. v. Meyer, 139 U. S. 540, 35 L. duce injury to the other beyond that which ed. 247, 11 Sup. Ct. Rep. 625; Singer Mfg.Co. results from the similarity of name.'” V. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, In the present case, the decree enjoined the 16 Sup. Ct. Rep. 1002; Elgin Nat. Watch use, “in any manner whatsoever," "of the Co. v. Illinois Watch Case Co. 179 U. S. 665, designation 'Remington'as the name, or part 45 L. ed. 365, 21 Sup. Ct. Rep. 270. of the name, of any typewriting machine

The general rule and the restrictions upon whatsoever manufactured by the Remingit are thus stated in Brown Chemical Co. v. ton-Sholes Company, or by defendant or any Meyer. There plaintiff had adopted as a person or concern, and from selling, offering, trademark for its medicine the words exposing or advertising for sale by means of "Brown's Iron Bitters,” and the defendants signs, show cards, catalogues, circulars, pubused upon their medicine the words "Brown's lications, advertisements, or by word of Iron Tonic.” This court, after commenting mouth, or in any manner whatsoever, typeupon the descriptive character of the words writing machines manufactured by said "Iron Tonic,” and confirming the defendants' Remington-Sholes Company or by defendant, right to the use of these, said:

or any person or concern under the name of "It is hardly necessary to say that an or- or as 'Remington-Sholes,' or by any desigdinary surname cannot be appropriated as a nation of which the word Remington shall trademark by any one person as against constitute a part.” This denies the right others of the same name who are using it to use the personal name, rather than aims for a legitimate purpose; although cases are to correct an abuse of that right, and innot wanting of injunctions to restrain the volves the assertion of the proposition that use, even of one's own name, where a fraud the use of a family name by a corporation upon another is manifestly intended, or stands on a different footing from its use by where he has assigned or parted with his individuals or firms. But if every man has right to use it."

the right to use his name reasonably and And, after citing numerous authorities, honestly, in every way, we cannot perceive Mr. Justice Brown, delivering the opinion, any practical distinction between the use of continued :

the name in a firm and its use in a corpora“These cases obviously apply only where tion. It is dishonesty in the use that is the defendant adds to his own name imita- condemned, whether in a partnership or cortions of the plaintiff's labels, boxes, or pack- porate name, and not the use itself. ages, and thereby induces the public to be- Goodyear's India Rubber Glove Mfs Co. lieve that his goods are those of the plain- v. Goodyear Rubber Co. 128 U. S. 598, 32 L. tiff. A man's name is his own property, and ed. 535, 9 Sup. Ct. Rep. 166, was a suit by he has the same right to its use and enjoy a corporation of New York against a corpoment as he has to that of any other species ration of Connecticut, to restrain the use in of property. If such use be a reasonable, business of the name “Goodyear's Rubber honest, and fair exercise of such right, he is Manufacturing Company,” or any equivalent no more liable for the incidental damages he name. It was held that "Goodyear Rubber may do a rival in trade than he would be for described well-known classes of goods proan injury to his neighbor's property by the duced by the process known as Goodyear's smoke issuing from his chimney, or for the invention; and that such descriptive names fall of his neighbor's house by reason of nec- could not be exclusively appropriated. And essary excavations upon his own land. These 'Mr. Justice Field, delivering the opinion,