
    Wilcox & Gibbs Sewing Machine Company, App’lt, v. Kruse & Murphy Manufacturing Company and Chas. Kruse, Respt’s.
    
      (New York Common Pleas,
    
    
      Filed January 3, 1887.)
    
    1. Patent rights—Infringement of—Action for—State courts have
    NO JURISDICTION OF.
    The federal courts are vested with the exclusive jurisdiction in cases of an infringement of patent rights, and state courts have no power to restrain infringements of patents, even though the question of jurisdiction is not raised hy the defendant; nor does the expiration of the patent during the pendency of the suit give the state court in which it is pending any jurisdiction in the matter.
    
      2. Same—Whatever secured by is free to public at the expiration of
    THE PATENT.
    Whatever is patented to any inventor and exclusively enjoyed by him or his assigns during the term granted by the letters patent, is free to the public at the 'expiration of the term.
    3. Trade mark—Cannot be acquired in a mechanical structure.
    A trade mark cannot be acquired in a useful mechanical structure, or in a part of a manufactured article. So held in the case of a portion of a sewing machine formed like the letter G.
    
      L. H. Walker, for appl’t; Mr. T n-hard, for resp’t.
   Per Curiam.

This is an appeal by the plaintiff from a judgment of the special term, dismissing the plaintiff’s complaint and dissolving an injunction.

The action was brought by the plaintiff to restrain the defendants from the manufacture and sale of sewing machines with certain forms and devices used by the plaintiff and described in the complaint, consisting of frames in the-shape of the Roman capital letter CG,’ and of the form and design of the legs and foot treadles of the Wilcox & Gibbs, sewing machines. An injunction was obtained by the plaintiff, which continued until the final judgment.

It is established by the proof that on August 10, 1858, letters patent were granted to the plaintiff assignor Gibbs for improvements in the sewing machines; that upon the surrender of said patent, re-issue letters patent No. 2,655, dated June 18, 186Y, were granted to him; that design letters patent No. 1,206, dated February 21, 1860, were granted to him, giving the exclusive right to make and sell the ‘ ‘G ” frame for seven years from that date. In the schedule annexed to the re-issue letters patent, No. 2,655, this frame is described as follows :

“Thus the general appearance of the machine will he that of a Roman letter ‘G,’ or of a hook open at one side where the table is interposed, which not only stamps it with a peculiar character, hut is also exceedingly useful, as it affords the greatest possible space for the cloth or material to be sewed or being turned and twisted under the needle and upon the table.”

And it was claimed by the inventor, as a part of his invention, among other things, as follows :

“The general arrangement oí a sewing machine comprising the parts whereby the sowing mechanism is brought into comparative relation substantially, as herein shown and described, that is to say, combining with the vibrating needle arm a frame shaped substantially like the Roman letter ‘G,’ as herein shown and described, ai:d tor the purpose set forth.”

That the said re-issue letters patent expired on the 9th. day of August, 1872. That on November 9, 1869, by letters patent, No. 3,742, there was patented to the plaintiff the leg and treadle, forming part of a sewing machine stand, shown in the plate accompanying said patents as a new and original design for a leg and treadle forming part of a sewing machine stand, and by said letters, the exclusive right of malting, constructing, using and vending the said design was granted to the plaintiff for the term of fourteen years. That this is the design used by the plaintiff for the leg and treadle of his sewing machine stand. That the defendant’s machine closely resembles the plaintiff’s and is made so like the plaintiff’s that only on a very rigid examination can a difference be discovered. That the defendants have by circulars and advertisements represented the machines made by them to be of a different manufacture and origin from the plaintiff’s machines, and that the defendants have not made any express representations whatsoever with respect to the origin or source of the sewing machines manufactured and sold by them.

The question to be decided, appears to be whether or not the plaintiff is entitled to be protected in the use of the “Gr” form of frame as a trade mark.

The design for the legs and treadles of the plaintiff, was, at the time of the commencement of this action protected by the letters patent. If the defendants have used said designs for the legs and treadles of their machine, they have infringed the plaintiff’s patent.

_ The federal courts are vested with the exclusive jurisdiction in cases of an infringement of patent rights and state courts have no power to restrain infringement of patents, even though the question of jurisdiction is not raised by the defendant; nor does the expiration of the patent during the pendency of this suit, give to this court any jurisdiction of the matter.

It is therefore clear that no relief can be granted by this court to the plaintiff for the use of their design for legs and treadles by the defendants.

The question left for decision has reference to the right of the defendants to use the “G” frame. In the re-issue letters patent, No. 2,655 the advantages of this frame are set forth and in claiming his invention, a claim is made in regard to this shape of frame as a useful mechanical device, the said shape and form Is also patented as a new and original design by letters patent No. 1,206, as hereinbefore stated. Both those patents had expired before the commencement of this suit.

It is a well settled principle, that whatever is patented to any inventor and exclusively enjoyed by him or his assignees during the term, is free to the public at the expiration of the term. The object arid intention of the laws authorizirig patents, “ is to secure to'the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals for the time and labor devoted to these discoveries, by the exclusive right to make, use, and sell the things discovered for a limited time.” Grant and others v. Raymond, 6 Peters, 243.

The plaintiff sought for, and obtained the exclusive right to use this form of frame which was given by the letters patent. Its importancé and value at the’present time are due, in a great measure at least, to the exclusive use conferred by the patents, and enjoyed by the plaintiff. The plaintiff’s rights are under those patents, and have expired with the patents and the reward provided by law for those who make inventions has been received by the plaintiff.

In The Singer Manufacturing Company v. Riley et al., 11 Fed. Rep., 706, the courts say:

“ There is not the least foundation in principle or reason for allowing the patentees to continue to enjoy as much of the inonopoly as they can save by the claim to use exclusively the trade names by which they identified and secured to themselves the reputation of their inventions. These go along with the invention as a dedication to the public for purposes of description and identification.”

The supreme court of Ohio in reversing the decision of the superior court in the case of Brill v. The Singer Manufacturing Co., uses this language:

“Where machines, during the time they are protected by patent, become known and identified in the trade by their shape, external appearance or ornamentation, their patentee, after the expiration of the patent, cannot prevent others from using the same modes of identification in machines of the same kind manufactured and sold by them.”

The court also say: “It would be a poor return for the exclusive privilege which the public gives for a long period to the patentee, if, after the expiration of his patent, he shall be allowed to virtually perpetuate his monopoly by preventing all others from using the name which will describe and make known the invention which has been dedicated to the public.”

The present is a stronger case than those above referred to, for the reason that the “Gr” frame itself was protected by patents which have expired.

The claim that the design patent of 1860 is invalid is not available to the plaintiff, for the reason that the plaintiff had enjoyed the exclusive benefits conferred by the patents during their existence, and cannot be permitted after their expiration to claim then invalidity, and for the further reason that this court has no jurisdiction of matters arising under patent laws.

The court below has also found, and we think the evidence establishes that the “ Gr ” frame has certain mechanical advantages afforded by its form, and is a useful mechanical structure, and we think it has been shown by the proof to be an essential part of the sewing machine. To hold that a trade-mark may be acquired in a useful mechanical structure, or in a part of a manufactured article would be in conflict with all the authorities.

The judgment should be modified by striking from it the seventh finding of law, and, as modified, affirmed.  