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$ 446. Limitations on Congress as to trade-marks.-In 1870 and 1876 Congress passed laws regarding trade-marks,

otherwise are wholly within the jurisdiction of the States, such as the enforcement of claims which were not enforceable under the State laws, descent of property and testamentary disposition in regard to aliens, which also in the absence of treaty rights are wholly under the regulations of the respective States. The cases sustaining these treaties are almost all cited in the appropriate portions of this work, and therefore are not repeated here.

The United States have regulated State fisheries under the treaty power on more than one occasion; by the treaties with Great Britain of 1854 and 1871 rights were given to Canadians to fish in waters within the three mile limit of every State, from Maine to Delaware, and no objection was ever raised in regard thereto.

This is clearly a case in which the treaty-making power should be exercised, in the absence of any other express power granted to Congress. It is manifestly necessary at the present time to find the power, as the evil cannot be remedied unless the power is found and exercised. It is shown that the States are prohibited, constitutionally, from exercising it, and unless the United States intervene, the remedy cannot be obtained.

In case it shall be exercised and the treaty sustained the remedy for an existing evil is complete. If not sustained the country is simply in the same condition it is now.

It was stated by one of the expounders of the Constitution that the object of vesting the treaty-making power in the United States was so that no single State could possibly disturb the harmony of the Union; that the impossibility of obtaining uniform legislation by thirteen different States had been demonstrated during the Confederation, and that the only safe method was to clothe the United States with the greatest possible power, so that the Federal Government could represent the States in making treaties which they could not make themselves.

Under this treaty-making power the United States can enter into an agreement with the Dominion of Canada to preserve the fisheries in all of the boundary waters; and the legislation which would subsequently be enacted by Congress, so long as it was consistent with the treaty, and necessary to attain the desired results and maintain the fisheries, would be in all respects constitutional.

Chief Justice Marshall has sustained the constitutional right of Congress to enact all legislation necessary to enforce all laws and treaties in the widest possible manner; and, wherever the United States can exercise any right under the Constitution, the power of legislation to make its laws and treaties effectual has been clearly demonstrated and sustained beyond all peradventure.

The question has been raised that, while the United States might, by treaty, grant rights to aliens to fish in our waters—which rights the States would have to respect regardless of their own laws-that it might be beyond the constitutional power of the United States to deprive a

extending the protection of the Government thereover throughout the United States ;1 the law was tested; the Su

citizen of a State of his right to fish in the lakes, or to create any limitations in regard thereto, or punish him for infractions thereof, under Federal statutes in regard to fisheries in State waters.

This contention, however, seems to have been fully answered by the cases in regard to extradition.

It was long ago held that the United States had no right under the Constitution to deport or surrender a criminal, but, as soon as treaties were made with various foreign countries for the extradition of criminals, the Executive as well as the Federal Courts were immediately clothed with the power of extraditing criminals, so long as the requisitions were in conformity with the treaties.

As extradition treaties were made, Congress passed laws enforcing them; and, while there is no constitutional power given to Congress to deport any persons from the United States, or to confine them for crimes committed in territory under the jurisdiction of other countries, all of the extradition legislation has been sustained as constitutional. Here we have instances of Congress by legislation punishing, or aiding in the punishment of, criminals, for crimes wholly without the enumerated subjects of the constitution.

The analogy between the two subjects is complete. If Congress can make laws for the arrest, confinement, surrender and deportation of criminals under the extradition treaties, they certainly can make laws to punish infractions of such rules and regulations as may be necessary to enforce the preservation of valuable property rights belonging to this country and our next-door neighbors.

It must be borne in mind in this connection that the prime object would be protection and preservation of the property, and, therefore, the element of punishment of infractions of rules necessary for that object would be incidental, and within the power of Congress under the clause authorizing necessary and proper legislation to execute the law of the land.



Whatever treaty may be concluded between the two countries in regard to this matter should be as complete as possible in itself, both as to the manner and method of preserving the fisheries and of enforcing the contemplated regulations.

There have been many decisions in regard to the method of enforcing treaties; in the present instance, undoubtedly the treaty could not sufficiently enter into details to bring it within that class of treaties which can be enforced as to all its details by the Executive without legislative enactment.

The question of how far a treaty can be enforced by the Executive alone, and to what extent legislation is necessary to enforce it, has been 1 For note 1 see p. 324.

preme Court in 18792 decided that property in trade-marks had been recognized and protected by the common law and the statutes of the several States; that it did not derive existence as property from the act of Congress providing for registering the designs in the Patent Office; that a trademark was neither an invention, discovery, nor writing, within the meaning of those provisions of the Constitution which conferred on Congress the power to secure the exclusive right therein to authors and inventors; that if acts of Congress protecting trade-marks could be upheld as regulations of commerce, it could only be so far as their use in commerce discussed by the Supreme Court of the United States in many cases; the Court has always adhered to the rule laid down by Chief Justice Marshall in Foster and Elam vs. Neilson, (2 Pet. 253), that, when either of the parties engages to perform a particular act, the treaty addresses itself to the political and not the judicial side of the Court, and the legislature must execute the contract before it becomes the rule of the Court, and in order to be equivalent to an act of the legislature it must be able to enforce itself without any legislative assistance.

This question arose under several of the extradition treaties; in the Metzgar case the District Court of the United States held the prisoner, on the ground that an extradition treaty could be enforced by the President and a surrender of the prisoner made by him without any legislation. Judge Edmonds, in the New York Supreme Court, before whom the prisoner was brought on habeas corpus, however, decided diametrically opposite to Judge Betts, and discharged the prisoner, on the ground that the treaty had never been made effectual by legislation, and that legislation was required for that purpose.

The general consensus of opinion at the present time seems to be that a treaty should be supplemented by legislation as to details of regulation, punishment of infractions and appropriations of money. Therefore, any treaty which is made in regard to these fisheries would probably have to be supplemented by consistent and reciprocal legislation, both by the Dominion Parliament and the Congress of the United States; it probably would not, so far as the punishment of infractions of regulations is concerned, go into effect until such legislation had been adopted, although as to some of the regulations, such as policing, preserving and stocking the fisheries, and in any other respects in which the Executives could act through the various departments of the respective Governments, such legislation might not be necessary. § 446.

141. See U. S. Rev. Stat. chap. 2, 1 Act of March 3, 1871, 16 U. S. title LX, SS 4937, et seq. Stat. at L. p. 580, prohibiting as 2 The Trade-mark Cases, U. S. fraudulent trade-marks similar to Sup. Ct. 1879, 100 U. S. 82, MILthose of foreign manufacturers. Act of 1876, 19 U. S. Stat. at L. p.


with foreign nations, or among the several States and with the Indian tribes was concerned ; that, as the legislation did not come within those limits, it was void for want of constitutional authority.

The court expressly avoided a direct decision as to the right to regulate trade-marks by treaties, the opinion saying:

“In what we have here said we wish to be understood as leaving untouched the whole of the question of the treatymaking power over trade marks, and of the duty of Congress to pass any laws necessary to carry treaties into effect." 3

$ 417. Regulation and protection of trade-marks by treaty.—Since that decision was rendered, however, the United States has entered into numerous treaties with foreign countries for the protection of trade-marks. During recent years our Government has made special efforts to extend international protection to industrial property throughout all of the civilized countries of the world in the same manner as postal facilities have been extended; it has not only been

8 This extract from the opinion is patents, and the second to trade on p. 99, 82 U. S.

and other marks, and commercial $ 447.

names. The Act appointing the 1 See TREATIES APPENDIX at end Commission will be found on p. 145. of this volume for some of these The history of the treaty relatreaties.

tions of the United States with forSee also Senate Document No. 20; eign countries in regard to trade56th Congress, 2d Session; Report marks and patents and the mutual of the Commissioners Appointed to protection thereof, together with Revise the Statutes Relating to the legislation of the United States Patents, Trade and other Marks, and of foreign countries affecting and Trade and Commercial Names the same has been collated in the under Act of Congress Approved various appendices to this Report. June 4, 1898. December 4, 1900. This Report consists in all of 529 Referred to the Committee on pages. On pp. 141-144 will be found Patents and ordered to be printed. I a table of contents in which the Washington, Government Printing laws of the many foreign countries Office, 1900.

in regard to trade-marks are colThis is a report of Francis Forbes, lated, and chap. 18, pp. 325-337 Peter Stenger Grosscup and Arthur contains an abstract of the existP. Greeley appointed uvder the ing “Treaty agreements relating Act of June 4, 1898, to revise the to trade-marks between the United statutes relating to patents, trade- States and foreign nations" alphamarks, etc. The Report is divided | betically arranged. into two parts; the first relating to

represented at, but has taken a prominent part in, the international congresses, which have been held for this purpose.

Pursuant to treaty stipulations the courts have protected the right of foreign holders of trade-marks in this country, and numerous decisions have been made as to the validity of trademarks and the rights of foreigners in this country under our treaty stipulations with foreign countries.? If Congress bas

2 Lacroix Fils vs. Sarrazin, U. S. | the registration of them in the Cir. Ct. E. D. La. 1883, 4 Woods, Patent Office. 174, 15 Fed. Rep. 489, PARDEE, J. “2. A trade-mark is neither an inThe question involved in this ac- vention, a discovery, nor a writing, tion is stated in the opinion, the within, the meaning of the eighth whole of which is as follows: “This clause of the eighth section of the court takes judicial notice of the first article of the Constitution, public treaties between the United which confers on Congress power States and foreign countries. to secure for limited times to auWhere a citizen of France has, in thors and inventors the exclusive compliance with the trade-mark right to their respective writings laws of the United States, duly reg- and discoveries. istered a trade-mark, he need not, “ 3. If an act of Congress can in any in bringing an action against a citi- case be extended, as a regulation of zen of Louisiana for violation of commerce, to trade-marks, it must his rights in such trade-mark, al- be limited to their use in comlege that there is in force a treaty be-merce with foreign nations, and tween the United States and France among the several States and with affording privileges in France to the Indian tribes.' citizens of the United States simi- “ 4. The legislation of Congress in lar to those given by the trade- regard to trade-marks is not, in its mark laws of the United States.” | terms or essential character, a reg

Trade Mark Cases, U. S. Sup. Ct. ulation thus limited, but in its lan1879, 100 U. S. 82, MILLER, J. guage embraces, and was intended In this case it was decided that to embrace, all commence, includthe trade-mark laws were uncon- ing that between citizens of the stitutional as being outside of the same State. power of Congress, except in so far “5. That legislation is void for as it related to commerce with for- want of constitutional authority, eign nations among the several inasmuch as it is so framed that its states and with the Indian tribes. provisions are applicable to all com

The points decided in this case merce, and cannot be confined to are stated in the syllabus as fol- that which is subject to the conlows:

trol of Congress.” “1. Property in trade-marks has In regard to the right to regulate long been recognized and protected trade-marks by a treaty, the court by the common law and by the expressly left that point undecided, statutes of the several states, and the opinion closing with the foldoes not derive its existence from lowing words (p. 99): the act of congress providing for 6. In what we have here said we


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