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GROVER & BAKER Sewing-MACH. Co. v. FLORENCE SEWING-MACH. Co.

[No. 9.

Vol. I.] resident plaintiff as well as to a non-resident defendant, and to enlarge the time within which the petition may be filed, leaving the alien defendant wholly unaffected by the new regulations.

Apply these rules of construction to the three acts of Congress referred to in this case, and it is clear that they will work out the following results: (1) In a case where the suit is commenced by a plaintiff in the court of a state of which he is a citizen, against a defendant who is a citizen of another state, the defendant may remove the cause into the circuit court of that district for trial. (2) Where the plaintiff brings his suit in the court of a state other than that of which he is a citizen, against a defendant who is a citizen of the state where the suit is brought, the plaintiff may remove the cause into the circuit court under the last-named act. Beery v. Irichi, 22 Gratt. 485.

Suppose, however, the plaintiff brings his suit in the court of a state other than that of which either he or the defendant is a citizen, the defendant having been found therein and been duly served with the original process, then neither the plaintiff nor the defendant can remove the cause from the state court into the circuit court for trial under any existing act of Congress, as in that case there is not controversy between a citizen of a state in which the suit is brought and a citizen of another state, nor is the suit one commenced by a citizen of a state in which the suit is brought against a citizen of another state, as the condition is as provided in the judiciary act. Both plaintiff and defendant being non-residents, the acts of Congress make no provision for the removal of such a cause into the circuit court for trial.

Unaffected as the judiciary act is by the latest of the three acts mentioned, the law still is that if the suit is commenced against an alien in a state court, he may file a petition for the removal of the same for trial into the next circuit court to be held in the district, at the time of entering his appearance in such state court. Non-resident defendants or alien defendants may also remove certain causes from a state court into a circuit court for trial, under the intermediate act of Congress, as before explained. Where the suit is commenced in a state court against an alien, or by a citizen of the state in which the suit is brought against a citizen of another state, the non-resident defendant or the alien defendant, as the case may be, may remove the cause from the state court into the circuit court for trial, even though it appears that a citizen of the state where the suit is brought is also a defendant, if the suit, so far as it relates to the non-resident or alien defendant, was instituted and is prosecuted for the purpose of restraining or enjoining such defendant, or if the suit is one which, so far as it respects such defendant, can be finally determined without the presence of the other defendants as parties in the cause.

Considering the stringent conditions which are embodied in the lastnamed act, it is doubtful whether it will prove to be one of much practical value, but as it remains in full force it cannot be properly overlooked in this investigation.

Suggestion is made that it is a step in advance of the judiciary act, but the force of the suggestion is not perceived, as it makes no provision that any party shall go into the circuit court for trial except such as may go or be sent there under the twelfth section of the judiciary act. Divest

Vol. I.] GROVER & BAKER SEWING-MACH. Co. v. FLORENCE SEWING-MACH. CO. [No. 9.

that act of the feature which provides for the severance of the defendants and that which empowers the plaintiff to proceed with the suit in the state court as against the other defendants, and it is exactly the same as the corresponding feature of the judiciary act, except that it extends the time for filing the petition for the removal of the cause from the time the petitioner enters his appearance in the state court to the time of the trial or final hearing of the cause.

Separately considered, the language employed in the "act for the removal of causes in certain cases from the state courts" to describe the parties and the suit in which the alien defendant or the non-resident defendant may remove the cause into the circuit court for trial, is identical with the language employed in the judiciary act, the two provisions differing only in the particulars heretofore sufficiently explained, showing that the well established rule applies in construing the later act, that words and phrases, the meaning of which in a statute have been ascertained by judicial interpretation, are, when used in a subsequent statute, to be understood in the same sense. Potter's Dwarris, 274; Bac. Ab. Statute I.; Pennock v. Dialogue, 2 Pet. 18; Cathcart v. Robinson, 5 Pet. 280; Me Cool v. Smith, 1 Black, 469; Com. v. Hartnett, 3 Gray, 450; Ruckmabove v. Mottichund, 32 Eng. L. & Eq. 84; Bogardus v. Trinity Church, 4 Sand. Ch. 675; Rigg v. Walton, 13 Ill. 15; Adams v. Field, 21 Vt. 256.

Such a construction in the case supposed becomes a part of the law, as it is presumed that the legislature, in passing the later law, knew what the judicial construction was which, had been given to the words, of the prior enactment. Support, therefore, to the theory put forth by the defendants cannot be derived either from the judiciary act or from the later act, entitled an act for the removal of causes in certain cases from state courts. 14 Stats. at Large, 306.

Admit that, and still it is insisted by the defendants that they had the right to remove the cause from the state court under the act to amend the act called the removal act. 14 Stats. at Large, 559.

Much stress is placed upon the particular language of that act, which is, that “when a suit is now pending or may hereafter be brought in any state court, in which there is controversy between a citizen of the state in which the suit is brought and a citizen of another state." Instead of that the corresponding language of the judiciary act is, if a suit be commenced in any state court.. by a citizen of the state in which the suit is brought against a citizen of another state. Different words are certainly employed in the two provisions, but it is difficult to see in what particular the jurisdiction of the state court is lessened by the last act, or in what respect the difference of phraseology supports the theory of the defendants, as "a suit by a plaintiff against a defendant" must mean substantially the same thing in the practical sense as "a suit in which there is controversy between the parties," as each provision includes the word suit, which applies to any proceeding in a court of justice in which the plaintiff pursues his remedy to recover a right or claim. 2 Bouv. Dic. 558; Weston v. City Council of Charleston, 2 Pet. 449; 1 Curtis Com. sec. 73, p. 85; Webs. Dic., Suit.

Indubitably they differ in this, that it is the defendant only who can remove the cause under the judiciary act, but the last-named act empow

GROVER & BAKER SEWING-MACH. Co. v. FLorence SewinG-MACH. CO.

[No. 9.

Vol. I.] ers the non-resident plaintiff, in a proper case, as well as the non-resident defendant, to exercise the same privilege; as in the former case, as well as in the latter, there is a suit pending in which there is controversy between a citizen of the state in which the suit is brought and a citizen of another state, and the express enactment is, that in the case supposed "such citizen of another state, whether he be plaintiff or defendant," if he will comply with the conditions stated, may, at any time before the final hearing or trial of the suit, file a petition for the removal of the cause. Cooke v. State National Bank, 1 Lansing, 502; Bryant v. Rich, 106 Mass. 191; Cooke v. State National Bank, 52 N. Y. 96.

Real parties only are empowered to claim that right under either act, and it is equally clear that the right of the defendant cannot be defeated by joining with him a mere nominal party in the action. Dodge v. Perkins, 4 Mason, 435; Rateau v. Bernard, 3 Blatch. 245; Ward v. Arredondo, 1 Paine, 410; Wormley v. Wormley, 8 Wheat. 451; 1 Curtis Com. sec. 74.

Special attention is also invited to the fact that the judicial power conferred by the Constitution extends to controversies between citizens of different states, and the proposition is submitted in argument that it would be competent for Congress to pass a law empowering one of a number of plaintiffs, or one of a number of defendants, to remove such a suit for trial from a state court into the circuit court for the same district, if it appeared that the petitioner, whether plaintiff or defendant, was a citizen of a state other than that in which the suit was brought, even though all the other plaintiffs or other defendants were citizens of the state in whose court the suit was pending; but the court is of the opinion that the question does not arise in this case, as the act of Congress in question, in the judgment of the court, does not purport to confer any such right.

Were it true that the circuit courts derive their judicial power immediately from the provisions of the Constitution, it might be necessary to examine that proposition; but inasmuch as it is settled law that the jurisdiction of such courts depends upon the acts of Congress passed for the purpose of defining their powers and prescribing their duties, it is clear that no such question can arise in a case like the present, unless it first be ascertained that Congress has passed an act purporting to confer the disputed power. Courts are disinclined to adopt a construction of an act of Congress which would extend its operation beyond what is warranted by the Constitution; but the suggestion that Congress possesses the power to confer a new privilege is not a sufficient reason to induce the court to extend an existing enactment by construction so as to embrace the privilege, unless the words of the enactment are of a character to warrant the construction.

Either the non-resident plaintiff or non-resident defendant may remove the cause under the last-named act, provided all the plaintiffs or all the defendants join in the petition and all the party petitioning are non-residents, as required under the judiciary act; but it is a great mistake to suppose that any such right is conferred by that act where one or more of the plaintiffs or one or more of the petitioning defendants are citizens of the state in which the suit is pending, as the act is destitute of any language which can be properly construed to confer any such right unless

Vol. I.]

LEA v. WOLFF.

[No. 9.

all the plaintiffs or all the defendants are non-residents and join in the petition. Bryant v. Scott, Dev. & B. Eq. 155; Hazard v. Durant, 9 R. I. 609; Waggener v. Cheek, 2 Dill. 565; Case v. Douglas, 1 Dill. 299; Bixby v. Course, 8 Blatch. 73; Ex parte Andrews and Mott, 40 Ala. 648; Peters v. Peters, 41 Geo. 242; Cooke v. State National Bank, 52 N. Y. 113.

Two cases only, besides the opinion given in this same case in the circuit court, to wit, Johnson v. Monell, 1 Wool. 390; Sands v. Smith, 1 Dill. 290, are cited to support the assumed theory, neither of which necessarily involved any such question, and the reasons given for the conclusion by the learned circuit judge, on the motion to dismiss the case in the circuit court, are not satisfactory. Judgment affirmed.

MILLER, J. I dissent from the opinion of the court in this case in reference to the construction of the act under consideration, and for this reason I dissent from the judgment.

BRADLEY, J., concurred in the dissent.

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When it is apparent that there is an intention to deceive the public by the use of the name of a place and the word descriptive of an article, such deception will not be protected by the pretence that such words cannot be used as a trade-mark. Where words and the allocation of words have, by long use, become known as designating the article of a particular manufacturer, he acquires a right to them as a trade-mark, which competing dealers cannot lawfully invade.

The essence of the wrong is the false representation and deceit, on proof of which an injunction will issue.

APPEAL from so much of an order of special term as denied an application for an injunction pendente lite restraining defendants from employing the words "WORCESTERSHIRE SAUCE" as a trade-mark.

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FANCHER, J. The imitation of the plaintiffs' labels on the celebrated article of their preparation was so palpable that the learned judge at special term granted an injunction against the defendants, restraining such imitation. He, however, held that in regard to the name -" Worcestershire Sauce "it contains nothing but the name of the place where it is manufactured, and the word sauce' as descriptive of the article sold," and that "neither of these words can be used in such a manner as to give the exclusive use of them as a trade-mark." The learned judge referred to several decisions as authority upon the point. Among them is a case decided by himself, Wolfe v. Goulard, 18 How. Pr. Rep. 64. That case has been cited with approbation in thirteen States of the

Vol. I.]

LEA v. WOLFF.

[No. 9.

Union. Perhaps the cases are so numerous as to establish a uniform current of authority in favor of the principle enunciated at special term.

The

But we are not called upon to extend the principle to a case where it is not strictly applicable. For the purposes of this case it is not necessary to deny that the name of the place where an article is manufactured, and the word which is descriptive of the article manufactured, may not be used by any tradesman who there makes and vends the article. That is not this case. The defendants' preparation is not manufactured at "Worcestershire," the plaintiffs' is and has been for more than thirty years. adoption, under such circumstances, of the very words contained in the plaintiffs' trade-mark, and the imitation in colors, size, language, and appearance of their labels and wrappers, are irresistible proof of an intention of the defendants to deceive the public and to lead purchasers to suppose that the defendants' preparation was the original Worcestershire sauce, so long manufactured by the plaintiffs. Where such an intention exists, the defendants should not be protected in their fraudulent imitation by the pretence that in the words employed the name of a place and the word descriptive of the article only are used. The defendants, doubtless, might, under proper circumstances, employ the name of a place where an article is manufactured, as well as the word descriptive of its character; but such words must be employed honestly and properly, and not with a design to imitate and deceive to the detriment of another. Where words or names are in common use, no one person can claim a special appropriation of them to his peculiar use; but where words, and the allocation of words, have by long use become known as designating the article of a particular manufacturer, he acquires a right to them, as a trade-mark, which competing dealers cannot fraudulently invade. The essence of the wrong is the false representation and deceit. When the improper design is apparent, an injunction should be issued. In such cases injunctions have been sustained, though the name of a place, or of a celebrated person, were within the trade-mark protected by the injunction. Messerole v. Tynberg, 4 Abbott Pr. R. N. S. 410; Matsell v. Flanagan, 2 Abbott Pr. R. N. S. 459; Amoskeag Man. Co. v. Spear, 2 Sandford S. C. 599; Caswell v. Davis, 4 Abbott Pr. R. N. S. 6; Newman v. Alvord, 49 Barbour, 588; Wotherspoon v. Currie, 5 L. R. App. Cases, 518.

In the last-mentioned case the plaintiff had purchased from Fulton & Co., of Glenfield, near Paisley, the good-will and trade-mark of their business. They had for several years prior to 1847 manufactered powdered starch, principally from East India sago, which was called " Glenfield patent double refined powder starch," and commonly, "Glenfield starch." The plaintiff had actually removed his manufactory from Glenfield to Maxwelton, where the starch was made and sold, when he applied for an injunction against John Currie, trading as Currie & Co. Currie had rented a small building from Fulton & Co., at Glenfield, where he manufactured starch, which was sold in packets similar in size and appearance to those of the plaintiff, and which he labelled "The royal palace double refined patent powder starch, manufactured by Currie & Co., Glenfield."

The plaintiff's case was that the defendant had taken the small building at Glenfield, and adopted the mark or label containing the name of that place, for the express purpose of inducing people to believe that his starch

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