APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.
MR. JUSTICE FIELD, after stating the case as above, delivered the opinion of the court.
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 twenty-eight years from the time it was registered, and had transferred to them his exclusive right to its use for five 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 one, 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 liberally 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 Western Law Journal, 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 in other 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 Stat. 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. Goulding, 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 one now before us. The rule applied in that case is as applicable now.
A trade mark may, sometimes, it is true, in form, 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 trade mark. 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 statute relating to copyright of books and other compositions in writing includes such labels, the proceedings taken to secure a copyright of the ...