HIGGINS et al. v. KEUFFEL et al.

The complainants found their claim to an injunction restraining the use of their registered label by the defendants, and to an accounting for the profits made by them on the sales of bottles of ink with such labels, upon the ground that one of their number had secured a copyright of the same for the period of 28 years from the time it was registered, and had transferred to them his exclusive right to its use for 5 years from May 1, 1885. On the other hand, the defendants contest the claim upon the ground that the constitution does not authorize a copyright of labels, which are simply intended to designate the articles upon which they are placed; and also on the ground that, if labels are within the copyright law, the conditions of that law were not complied with. The clause of the constitution under which congress is authorized to legislate for the protection of authors and inventors is contained in the eighth section of article 1, which declares that 'the congress shall have power to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.' This provision evidently has reference only to such writings and discoveries as are the result of intellectual labor. It was so held in Trade-Mark Cases, 100 U. S. 82, where the court said that, 'while the word 'writings' may be literally construed, as it has been, to include original designs for engravings, prints, etc., it is only such as are original, and are founded in the creative powers of the mind.' It does not have any reference to labels which simply designate or describe the articles to which they are attached, and which have no value separated from the articles, and no possible influence upon science or the useful arts. A label on a box of fruit, giving its name as 'grapes,' even with the addition of adjectives characterizing their quality as 'black,' or 'white,' or 'sweet,' or indicating the place of their growth, as Malaga or California, does not come within the object of the clause. The use of such labels upon those articles has no connection with the progress of science and the useful arts. So a label designating ink in a bottle as 'black,' 'blue,' or 'red,' or 'indelible,' or 'insoluble,' or as possessing any other quality, has nothing to do with such progress. It cannot, therefore, be held by any reasonable argument that the protection of mere labels is within the purpose of the clause in question. To be entitled to a copyright the article must have by itself some value as a composition, at least to the extent of serving some purpose other than as a mere advertisement or designation of the subject to which it is attached. This was held substantially in Scoville v. Toland, 6 West. Law J. 84, which was before the circuit court of the United States for the district of Ohio as early as 1848. There application was made for an injunction to restrain the use of a label containing the words: 'Doctor Rodgers' Compound Syrup of Liverwort and Tar. A safe and certain cure for consumption of the lungs spitting of blood, coughs, colds, asthma, pain in the side, bronchitis, whooping-cough, and all pulmonary affections. The genuine is signed Andrew Rodgers,'—which the complainant had entered in the clerk's office of the district court of the United States for the district of Ohio, and n o ther respects complied with the law. It was shown by several affidavits that the medicine prepared by the complainant was efficacious in diseases. The defendants insisted that the label was not the subject of copyright. In considering this question Mr. Justice MCLEAN, presiding in the circuit court, referred to the act of congress of 1831, giving a copyright to the author of any book or books, (4 St. c. 16, p. 436,) and held that the label was not a book within its meaning, although it had been decided under the English statute that a composition upon a single sheet might be considered as a book. Clementi v. Golding, 2 Camp. 25, 32. But Mr. Justice MCLEAN, distinguishing the case before him, said: 'The label which the complainant claims to be a book refers to a certain medicinal preparation, and was designed to be an accompaniment of it. Like other labels, it was intended for no other use than to be pasted on the vials or bottles which contained the medicine. As a composition distinct from the medicine, it can be of no value. It asserts a fact that 'Doctor Rodgers' Compound Syrup of Liverwort and Tar' is a certain cure for many diseases, but it does not inform us how the compound is made. In no respect does this label differ from the almost numberless labels attached to bottles and vials containing medicines, and directions how they shall be taken. Now these are only valuable when connected with the medicine. As labels they are useful, but as mere compositions, distinct from the medicine, they are never used or designed to be used. This is not the case with other compositions which are intended to instruct and amuse the reader, though limited to a single sheet or page. Of this character would be lunar tables, sonata, music, and other mental labors Concentrated on a single page.' The court was therefore of opinion that the statute could not bear a construction admitting the label within its protection, and the injunction was refused. The law of 1831, so far as books or compositions in writing are concerned, was as broad as the law now in force, and the label there rejected as not within the statute was more extended and full than the one now before us. The rule applied in that case is as applicable now. A trade-mark may, sometimes, it is true, in from serve as a label, but it differs from a mere label in such cases in that it is not confined to a designation of the article to which it is attached, but by its words or design is a symbol or device which, affixed to a product of one's manufacture, distinguishes it from articles of the same general nature, manufactured or sold by others, thus securing to the producer the benefits of any increased sale by reason of any peculiar excellence he may have given to it. Manufacturing Co. v. Trainer, 101 U. S. 51, 53. A mere label is not intended to accomplish any such purpose, but only to indicate the article contained in the bottle, package, or box to which it is affixed. The label here is not claimed as a trademark. If the complainants have any right to its words as a trade-mark, it is not in any manner involved in this case, as was stated by the court below.

But, assuming that the constitution authorizes legislation for the protection of mere descriptive labels as properly the subjects of copyright, and that the stattute relating to copyright of books and other compositions in writing includes such labels, the proceedings taken to secure a copyright of the label in the present case were insufficient and ineffectual for that purpose. The Revised Statutes of the United States secure to the author, inventor, or proprietor of any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph, and to the executors, administrators, or assigns of such person, the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same, upon complying with certain provisions. Section 4952. One of those provisions is that the person seeking a copyright shall, before publiati on, deliver at the office of the librarian of congress, or deposit in the mail addressed to such librarian, a printed copy of the book or other article for which he desires a copyright, and within 10 days from the publication thereof deliver at the office of such librarian, or deposit in the mail addressed to him, two copies of such copyright book or other article. Section 4956. They also provide that no person shall maintain an action for the infringement of his copyright unless he has given notice thereof by inserting in the several copies of every edition published, on the title-page or the page immediately following, if it be a book; or if a map, chart, musical composition, print, cut, engraving, or photograph, by inscribing upon some portion of the face or front thereof, or on the face of the substance on which the same shall be mounted, the following words: 'Entered according to act of congress in the year _____, by A. B., in the office of the librarian of congress at Washington.' Section 4962. The act of June 18, 1874, (18 St. c. 301, p. 78,) changes the previous law in some respects. It allows, in place of the statement of entry in the office of the librarian, the simple use of the word 'copyright,' with the addition of the year it was entered, and the name of the party by whom it was taken out. It also declares that the words 'engraving,' 'cut,' and 'print,' shall be applied only to pictorial illustrations or works connected with the fine arts; and also that no prints or labels designed to be used for any other articles of manufacture shall be entered under the copyright law, but may be registered in the patent-office; and the commissioner of patents is charged with the supervision and control of the entry or registry of such prints or labels in conformity with the regulations provided by law as to copyright of prints. This statute does not, however, make any change in the requirement of notice; it only permits the form of it to be changed. The copyright is secured when the registration is complete, and a certificate of the registration is given by the commissioner, just as under the former law it was secured when the proper filing had been made with the librarian of congress and his certificate was issued. But in this case notice of the copyright obtained has not been given as required. The law in that respect has not been followed. The fact of registration alone is placed upon the label. The word 'copyright' is not used, and, of course, with its omission the essential facts respecting any copyright are omitted also. The law, therefore, has not been complied with, and by its very terms no action can be maintained for the infringement of the alleged copyright without such compliance, and, of course, no suit in equity to restrain any future use of the label. Rev. St. § 4962; Wheaton v. Peters, 8 Pet. 591; Callaghan v. Myers, 128 U. S. 617, 652, 9 Sup. Ct. Rep. 177. Decree affirmed.