*1 v. RILEY. ALLEN of the Case. Statement in trans- successfully
the road to its rivals compete of portation freight. interstate passengers of the Circuit of We are that the of opinion judgment Ap- was peals
Affirmed. ALLEN RILEY. THE OF OF STATE KANSAS. COURT
ERROR TO THE StTPREME 3, 1906. December November 1906. Decided No. Submitted 99. patents prohibiting of in- pass law the sale for
While a State transfer, Congress regulating their it has nullifying of the laws ventions subject, Congress legislates on the to make reasonable power, until rights protect patent as will its regulations to the transfer in of Kansas that fraud; requirement a in laws before citizens rights, copy of the letters an authenticated sale or barter of right patented be in sell the shall filed of the vendor to and the sold county which the is not within clerk of the the office regulation. an unreasonable Kansas, 378, affirmed. (cid:127) who was error, plain- J. the defendant Riley, Frances in error, a plaintiffs below, judgment against tiff recovered of Brown District Court below, $1,250, defendants was affirmed Kansas, State judgment County, and the defendants below State, Supreme by writ case here of error. by brought have a de- was commenced petition The suit filing Kansas, District Court error, below, plaintiff fendant lands of certain 1902, to the value alleged March recover to the defendant to have been transferred plaintiff to plain- for the transfer Erasmus W. Allen, payment part dated Kentucky under tiff of for the to re- machine. January 30, 1901, washing to comply of the defendants the failure cover based upon do not statute, defendants which failure Kansas with the TERM, Argument for Plaintiffs in Error. 8.U. but deny, they insist that statute is as being in vio- lation the Constitution- the United States and the act *2 of Congress referred to in the The opinion. Kansas statute is of A 182 of the Laws 1889. of chapter the act is set copy out the margin.1
Mr. Loomis, N. H. Mr. R. W. Blair and Mr. H. Scandrett A. for in error: plaintiffs
The gives Constitution to Congress power promote the of science and useful progress arts, by securing for limited to times authors and inventors the exclusive to right their and writings discoveries, and respective Congress has exer- 182, Chapter 4356, (paragraphs 4358, Laws of 1889 4357 and General Kansas, 1901), Statutes as follows: reads any 1. be for person It shall unlawful to sell or barter or offer to sell “ Sec. any right,' patent any right or barter or person allege which such shall to be right, any State, patent county a within this filing without first with the County copies Court of clerk District patent the- duly letters authenticated, swearing affirming at the and same time or to an affidavit patent genuine, before such clerk that such letters are and have not been annulled, or revoked and that he has full sell or right barter the patented; so name, affidavit shall also age, set forth his occupation residence; agent, name, and if an occupation and the and residence of his principal. copy A of this affidavit clerk, shall be filed in the office of said give clerk copy and said shall a said affidavit applicant, who shall any person on the same to demand. exhibit Any obligation person may any writing 2. who take any for which “Sec. right, right, him patent or claimed or to be a her shall form shall, consideration, any part signed by or the a before whole the makers, body obligation, in- of said written maker or insert the above the' makers, legible writing print, or signature words, or of said maker the right.’ patent ‘Given for or Any person who shall sell or barter offer sell or 3. barter within “ Sec. obligation State, any promise writing patent or this or shall take for right, complying call a without or for what he act, requirements or refuse to exhibit the of this shall when de- certificate misdemeanor, manded, on guilty shall and conviction be deemed thereof jurisdiction any competent any shall be fined .in sum before court of dollars, jail exceeding imprisoned proper one be thousand months, jury county try- six at discretion of the court not more than ing same, party injured in a and shall be liable civil action damages sustained.” RILEY.
ALLEN.v. Argument
203 U. S. Ptaintiffs in' Error. power by cised that appropriate legislation regulating the issue of letters for their providing assignment. Comp. 1901, St-at. as amended act March § has to take attempted exclusive charge issuing patents.
It has prescribed manner of making application, proof required, time for which granted, finally, shall every be assignable by instrument in writing, which shall be recorded in the Patent within three Office from its date. .months
That the assignment shall be in and be recorded writing in the Patent Office the only restrictions prescribed by and are Congress, only ones contemplated. question squarely whether or not presented
state statute
additional
placing
restrictions on
assign-
*3
of a
in
ment
conflict with
the Constitution and laws
United
States. The state court has held it was not.
Mason v. McLeod, 57
The
Kansas, 105.
decisions of the
state courts are not harmonious. Those
a
taking
contrary
view to the Kansas court include Hollida Hunt,
v.
70 Illinois,
109; Cranson v. Smith, 37 Michigan, 309;
White,
Crittenden v.
Minnesota, 24;
23
Ex
2
parte Robinson,
309;
Biss.
Helm v.
National Bank,
Indiana, 167,
43
but see Patterson v. Ken-
U. S.
tucky, 97
501. See also Brechbill v.
102
Randall,
Indiana,
528;
v.
Hankey Dovmey,
118yWilch
116
v.
Indiana,
14
Phelps,
Nebraska, 134; Commonwealth v. Petty,
This court has decided that a in the exercise of its police regulate the of a handling product manu- factured under a oil as in Patter- illuminating son’s case and sewing-machines case, Webber’s but it has never decided that a State can any way interfere with an TERM, 1906.
350 Argument 203 S. Defendants Error. U. to his The inventor’s exclusive decisions discoveries. on Patterson’s and Webber’s cases show the comménting the tangible distinction made between manu- plain property a factured and the incorporeal rights under owner of the Commonwealth v. S. patent. Rep. 29 W. Petty, Am. 291; Hutchinson, 394; v. Fed. v. P'egram Castle Rep. Alkali 122 Fed. Witch Co., Rep. 1005; Nebraska, v. Phelys, 134.
The Kansas statute on Supreme upholds it is vice ground that a but overlooks the police regulation, all owners, good one class including patent-right a certain kind of created bad, imposing property by any other Congress, prop- an act of burdens borne in the State. erty than
The act is no was the police regulation more proper other all flour States Virginia, requiring imported act Voight which was this court. inspected, to be held v. U. Wright, S. clause
The Kansas statute also violates the protection equal out a class Amendment, singles the Fourteenth because into existence an act under brought of property on burden account grant imposes simply constitutional U. S. 226. Cammeyer Newton, its character. defendants Mr. T. T. Woodbiim for Mr. A. B. Crane and error: inter- Federal nor does not trench upon power, *4 law. the by with to a Federal right patentee
fere secured with the It true that no can interfere es- away any or take to sell his assign and patentee The provisions feature his exclusive right. sential They no effect. however, have such purpose question, for the protection designed of police regulations, in the nature great There is fraud. and against imposition the people in- transfer and fraud for imposition opportunity many a patent exists such tangible property, 351 v. RILEY. ALLEN of the Court. Opinion U. S. 203 transfer of such regulations have prescribed
States the' control those which essentially differing property, decisions early There were some of other property. transfer Federal trenched upon regulations that holding authorities but recent of the patentee, the rights by enacted be regulations reasonable police hold Federal without usurping exclusive infringing upon Government v. New 528; Indiana, Randall Breckbill v. 102 patentee. Indiana, 116 356; Wright, v. Indiana, Pape 108 Walker, Wick 148; Tod v. 142 Indiana, 502; Sandage Studebaker, v. Y.N. 109 370; Rosssler, Herdic v. St. & 36 Ohio Co., Brothers 173; Kentucky, v. Pa. Patterson St. Haskell v. 96 127; Jones, U. S. 344. v. 103 501; Virginia, Webber U. S. 97 of police regulations the ordinary to establish The power be assumed individual and cannot with has been 574; Lim., 572, Const. Cooley, Government. the National v. Reeves and see also 501, U. S. v. Kentucky, Patterson Fed. 782; Rep. Brosnahan, 51 Fed. Corning, Rep. Re Newton, v. 528; Cammeyer 9 Johns. 62; Ingan, v. Van Livingston U. S. immunities abridge does privileges Amendment the Fourteenth of citizens guaranteed does not interfere That amendment Constitution. v. Mugler the States. exercise of police power
proper
678;
U. S.
623; Powell v.
Pennsylvania,
U>S.
Kansas, 123
v.
If the statute is a reasonable exercise violate the protective follows does not necessarily Voight Wright, of the amendment. clause distinguished. state- Peckham, foregoing
Mr. Justice
after making
delivered the
of the court.
ment,
opinion
is con-
The sole
in this case
question
our determination
*5
TERM,
352
Opinion of the Court.
of
constitutionality
the
the Kansas act.
opinion
The
cerning
the State of Kansas is
Supreme
reported
Kansas, 378,
71
and
The Mason v. McLeod, Kansas, 105, case has by been followed that of Pinney v. First National Bank Concordia, Kansas, 223.
The defendants insist that act the arti- question violates cle one, of the Constitution of the section United Federal statute passed pursuance thereof, Rev. being 4898; Stat. Stat. Comp. 3387. The Constitution p. grants § to “To promote science and Congress progress right useful arts for limited times to authors and in- securing ventors the exclusive to their right respective writings discoveries;” and section. 4898 of the Revised Statutes pro- every vides that or interest therein shall be assignable in law an instrument writing, is made assignment any subsequent against purchaser or for a mortgagee, valuable consideration, without notice, unless it is recorded in the within Patent Office three months from the date thereof.
It is plaintiffs asserted in error that subject the sale or assignment the whole or any part of interest ain is derived from the laws of with passed reference constitutional provision quoted above, and regulations whatever, by any state in regard to such sale, and making provision respect them, are illegal. Court of' Supreme Kansas has maintained and upheld act on Kansas that the ground statute simply rea- and proper sonable exercise police power act. Mason v. McLeod, supra. That court was of opinion provisions the Kansas did not trench upon the Federal nor interfere with the secured to patentees by Federal law. The does not assert that a state opinion statute can interfere aof patentee sell his nor that it assign away can take feature any essential of his but, exclusive
ALLEN RILEY. -Opinion
JÜ03U. S. of the Court. as is stated, in the act no such provisions *6 purpose have that “they are in the effect; nature police regulations for the of the protection designed people against imposition and opportunity fraud. There for fraud and im- great in the transfer of such exists position intangible property, in a and patent many the States prescribed have transfer the of such regulations property essentially differing from those which control the transfer property.” other Many authorities are cited, the opinion then continues: “The doctrine of these is that cases laws patent do-not' from prevent police enacting for the regulations and security of its protection citizens, that regulations ours, mainly like to protect designed people those who have actually no imposition to sell, sell or own patent rights should be upheld. is valid.” We think the statue
In statute, Indiana like that Kans¿s, has been that State. upheld by Supreme Brechbill v. That Indiana, 102 528. case has Randall, since that time in Indiana. v. been followed New Walker, 108 Indiana, 365.
In somewhat similar to the Ohio a statute one in has question v. Wick Bros. Co., been Tod & 36 Ohio St. upheld. 370. has been reached in Pennsylvania. And same result Hask In Herdic v. Jones, Roessler, v. 86 Pa. 173. ell St. 109 N. Y. kind of a of the same 127, validity has been upheld. v. Wyatt Wallace, Arkansas, 67 575; also State v. Cook, See Tennessee, 499. The statutes 107 different States are all like the Kansas law, they but precisely provisions make the sale regard under and sometimes notes given their purchase, which cannot be contention upheld under the of plaintiffs in herein, error that all are in provisions violation of or inconsistent with ithe laws on the subject. courts of some other like them, .having questions before have Illinois, held their statutes void. Hollida v. Hunt, 70 109; 309; Smith, Cranson v. 37 Wilch Phelps, v. 14 Michigan,
vol. Com—23 TERM,- 1906
Opinion Court. Wisconsin, 403, some 134; Lockwood, State v. Nebraska, others. Circuit, Ozan
The Circuit Court of Appeals Eighth Bank, National 145 Fed. County Rep. v. Union Lumber Co. subject Arkansas this same a statute of has held between articles of property of its discrimination void, because fact that only based on the character, class or of the same aby was protected discriminated against property case, In States. the opinion United by the granted and commented upon. are cited authorities upon U. S. Kentucky, Patterson v. cited are cases Among U. S. v. Virginia, and Webber of a Kentucky, supra, owner In Patterson *7 was oil convicted of the violation of burning an improved by the sale of the oil covered by patent. statute Kentucky to sell such oil claimed the right notwithstanding owner a standard below which oil was which statute, provided and the sale purposes illuminating as dangerous regarded It was oil patented was admitted the which prohibited. This state standard. court held the to the up did not come and that of the was patent was owner conviction of his from under by liability reason ownership, not protected, That was to be one passed statute. held the state its of the State over powers exercise of the in the legitimate and it was said that it did not violate affairs, domestic purely as when States, Constitution or laws of the United either once into its by comes protected property existence to the same to the control of the several States use species property. as other extent also to property relates tangible v. Virginia, supra, Webber that did not and it was held aby' patent, covered law licensing of the taxing exclude from the operation a patent. manufactured under the State the property tangible that It was said that case never.intended “Congress police powers laws should displace the patent health, "which that term those good meaning ALLEN v. RILEY. Opinion U. S. the Court. order, peace, general welfare the community pro- are n Whatever
moted. secured to must be inventors in subordination to enjoyed this general all within property State over its limits.” While these two cases do cover the us, one now before they because refer to property has manu- tangible been factured and come into existence under and the case patent, us before relates provisions which are to an accompany out of a assignment intangible yet rights, growing patent, of the States to order general protect legislate their citizens their lives and from fraud and property deceit not as without limit, course, but as recognized, being exercised being properly cases named.
We think the State has the power (certainly until Congress subject) legislates provision shall the sale or accompany assignment under arising to make reasonable the sub- regulations concerning ject, protect calculated its from fraud. And citizens we think has not so legislated by provisions regard- contained the act referred to. ing In some of the cases such statutes holding is said that it is unfortunately true that frauds are many committed under color of and that patent rights, laws are not so .the framed to secure public cheated worth- being but inventions, less hold they statutes notwithstanding *8 of nature of the one under to void, consideration be as of owner a trenching upon of secured the Constitution and laws of the United States. To this kind aof uphold statute no means to authorize any which, State to terms in impose possibly, language “ Davis, of Mr. in Ex Justice parte Robinson, Biss. 309, would in a result the sale prohibition of this species of property within its and in this borders, way nullify the laws of Congress which its and regulate transfer, destroy conferred power upon by the Constitution.” a Congress Such statute would a not be reasonable of the exercise powers State. TERM,
Opinion Mr, Justice Court, speaking through Camp- Michigan Jn in that case this act under review bell, holding while said: Smith, Cranson invalid, Michigan, subject of an- evil the magnitude cannot but “While we recognize discredit, into’ and has patents popular which brought has. similar that in Michi- States to in several provoked legislation hand fail theseriaws a to see-in we cannot on the.other gan, to the evil hindering parties and clear check plain purpose deal with they may from with them patents dealing owning a evil, unusually If there is special possessions.” their other when easily parties dealing and perpetrated frequent a or claimed to exist under the sale of rights existing in the bona exercise why may not, we do not see fide statutory enact special provision of its powers, .some ¿vil, and omit to enact the same -to arrest such may tend There of other disposal property. provision concerning can so called be properly against no discrimination It is exercised legislation. property rights, frauds and the citizen attempt siftiply protect against in such which can more readily perpetrated be impositions ordinary prop- than cases of the sale cases erty. fair of the power be exercise must a reasonable act. evil well-known checking
of the State for the purpose far as fraud possible, imposition ’to so prevent, ’Possibly might under patents. to the sales take- States away which would enact yet but it has not as done subject, power legislate upon that or interes every patent, simply provided so. It.has to the various be therein, writing, leaving shall assignable in for the provide safeguarding States of ca patent, with the assumed owner those dealing terests of pur has been the deal with his To assignee. them by the various passed among of the aets pose within the Kansas, and we think that was of the State " statute. The expense to enact such *9 ALLEN RILEY. Day, JJ., dissenting. White
203 U. S. in the filing copies of affidavits making various counties in which the Owner of the desired to deal with as them is not so in our great judgment to be fail to regarded oppressive unreasonable, and we find any other act part so may be regarded. fair Some latitude must be allowed the States the exercise of their on this subject. It will do to tie them up so carefully that they cannot move, unless the idea is that the States have positively no power whatever on the This subject. we do not at believe, rate the absence of Congressional The mere legislation. provision the Federal statute for and its record as against subsequent purchasers, is not such etc., as takes legislation away the of'the States to on subject- legislate themselves a manner neither inconsistent with nor opposed to the Federal statute. We think the judgment and it is right,
Affirmed. White, Mr. Justice with whom concurs Mr. Justice Day, dissenting. brother
My Day myself dissent. The reasons, however, him are impel broader than those me. In influencing terms Kansas statute, which the court gefieral now upholds, one compels selling any county of of Kansas to file clerk such county an authenticated copy patent, with an together affidavit as to the genuine- ness of the and as to other matters. The statute, moreover, exacts that where a note is for the given purchase of a price there shall be inserted in the note a statement it is for a given patent right, presumably deprive note of the attributes We paper. commercial both think the requirements as the patent recording and affidavit are void, because dele- repugnant gated by the Congress Constitution on the patents, and because in conflict with on legislation TERM,
Opinion of Court. *10 is also reasons, my Day same for like brother subject. And, which an in- exacts opinion provision of the fact in for the sale of patent sertion a note right given in This provision; my that it was sale. latter given police had the to make as reasonable power opinion, dele- as' to patents repugnant .regulation which by the Constitution or the legislation to Congress gated in furtherance thereof. has enacted & v. CARL. WOODS SONS JOHN THE THE COURT OF STATE OF TO SUPREME ERROR ARKANSAS. 3, November December 102. Submitted 1906. Decided No. require Riley, p. of a one ante 347 followed State Allen v. applied selling patent and to a law to record the letters Arkansas, given right, if if for a also makes a note void given. was not show on its face for what it note does Arkansas, affirmed. , facts are stated the opinion. Mechem, Edwin Homer C. Mechem and Mr. Mr. for plaintiff- ' , in error. Fletcher Mr. Mr. W. C. for defendant John Ratcliffe error. Peckham the court. opinion Justice delivered
Mr. was court proper This action brought the amount to recover Arkansas error plaintiffs defendant note, of a was promissory given him machine and of the the sale to of a patented error on Arkansas. Before the the- the State of