
    WOODMAN’S CASE.
    George B. Woodman v. The United States.
    
      On the Proofs.
    
    
      The claimant applies for a trade-mark and, pays the fee of ¡¡¡>25. His trade-mark is duly registered. Subsequently the statute authorizing the registration of trade-marks is declared unconstitutional. He sues to recover back the fee.
    
    I. The trade-mark statute (Rev. Stat., §§ 4937, 4938) did not constitute a contract Rinding- the government to protect a party in tire exclusive use of Iris trade-mark.
    II. Where a person paid the prescribed fee for the registration of his trademark, he cannot recover it back on the statute relating to trade-marks being- pronounced, unconstitutional.
    
      
      The Reporters'1 statement of tbe case:
    The following are tire facts of this case as found by the court
    On the 10th day of May, 1878, the claimant, a citizen of tin State of Pennsylvania, under the statute in such case made anc provided, made the following application to the Oommissione] of Patents:
    “ To the Comissioner of Patents :
    
    “ Your petitioner respectfully represents that ho is ongaget’ in the sale of flour at Philadelphia, in the State of Pennsylvania and that he is entitled to the exclusive use upon flour which In sells of the trade-mark described in the annexed statement oi specification and illustrated in the accompanying fac-simile.
    “ He therefore prays that he may be permitted to obtain pro tection for such lav ful trade-mark under the law in such case; made and provided.
    “G-eorge Bliss Woodman.”
    At the same time the claimant caused to be recorded in tin Patent Office a statement in conformity with the first of the three requirements contained in section 4937 of the Eevised Statutes and also the written declaration, verified, as required by sec tion 4938 of said statutes; and complied with all the regula tions prescribed by the said Commissioner; and paid the fee o: $25 required to be paid in such cases; and the claimant’s trade mark was thereupon registered in the office of said Oommissione: on the 21st of May, 1878.
    
      Mr. George A. King for the claimant:
    1. The claimant and the government entered into a contract by which on the one side was promised protection for the re corded trade-mark, and on the other side was the recording of the trade-mark, the payment of $25, and a compliance with certain specified rules and regulations. (Eev. Stat., § e 937.) All of this has been fully performed and executed oi the part of the claimant. Nothing whatever has been or can be done on the part of the government to fulfill its part. The claimant now sues to recover the money paid on a contract the consideration of which on the other side has wholly failed (Dartmouth College v. Woodward, 4 Wheat., 518, New Jersey v Yard, 95 U. S., 104; Claflin v. Godfrey, 21 Pick., 1; 1 Story Eq. Jar., 142,143; Hitchcock v. Gittings, 4 Price, 135; 2 Kent Com., 369; Stent v. Bailis, 2P. Wms., 220; Oolyer v. Olay, 7 Bear., 18S; Allen v. Hammond, 11 Pet. 63; Cham/glin v. Laytin, 1 Edw., 471; Bliss v. Negus, 8 Mass., 46; IZiZZ v. Rewee, 11 Met., 271 ; Wheeler v. Board, 12 Jolm., 363; Broten y. Harris, 2 Gray, 359; Carter v. Carter, 14 Peck., 428; Farrington y. Tennessee, 95 U. S., 679.)
    2. Tbe United States are a corporation. (United States v. Maurice, 2 Brock., 96; United States y. Fox, 94 U. S., 315.) Tbeir Constitution is tlieir charter and the law of their being. (Cooley Const. L., 9; Martin y. Hunter, 1 Wheat., 326; Gibbons y. Ogden, 9 Wheat., 187.) The case at bar may very properly bo considered as the case of a corporation entering into a contract ultra vires. In such a case it is always held that the corporation must account for all benefits that it has received under the ultra vires transaction. Especially must it return all moneys which it has actually received. (Green’s Brice’s Ultra Yires, 717-749; Bank of Australia v. Breillat, 6 Moo. P. O. 0., 152; Burges & Stock's Case, 2 J. & H., 441; Wilson's Case, L. B., 12 Eq., 521; Whitney Arms Co. y. Barlote, 63 N. Y., 62; Boisgerard v. H. Y. Banking Co., 2 Sandf., ch. 23; Dickinson v. Hall, 14 Peck., 217; Howe v. Richards, 32 Mass., 64; Dill v. Wareham, 7 Met., 431.)
    The money sought to be recovered in the present action was paid under a mistake. If our two preceding propositions are sound, it is wholly immaterial whether the mistake was one of fact or of law. (Glaflin v. Godfrey, 21 Pick., 1.) We do notbelieve that the case, rightly considpred, turns on the question of mistake. If, however, the case is considered as one of money paid under a mistake of law, it is submitted that it is within the well-settled and recognized exceptions to the rule that money paid in mistake of law cannot be recovered back. “But whether equity will or will not interfere in the case of a pure mistake of law, and whatever may be the true distinction to be taken between the cases, it is nevertheless clear that any additional circumstances will readily be laid hold of by the court, as constituting sufficient grounds for interposition. Thus, where ignorance of the law exists on one side, and that ignorance is known and taken advantage of by the other party, the former will be relieved. More particularly will this be so if the mistake was encouraged or induced by misrepresentation of the other party.” (Bisp., Prin. of Eq., § 188.) And tbe rule is the same at law, in the action for money had and received — an action of which this court has undoubted jurisdiction (United States v. State Bank, 90 IT. S., 30), and which is called by Blacks tone (3 Com. 162) u a very extensive and beneficial remedy,” and by Lord Mansfield, (Moses v. Maeferlan, 2 Burr., 1002) a “kind of equitable action.” 2 Chit. Con., 898-950; Br. L. M., 79; 1 Story Eq. Juris., 110-139; Bisp. Prin. of Eq., 184-389; 2 Evans’ Pothier on Oblig-., 308; Newdigate v. Davy, 1 Ld. Raym., 742; Bize v. Bickason, 1 T. R., 285; Beynell v. Sprye, 1 D. M. & G., 710; Fx parte James in re Gondon, L. R., 9 Oh. App., 009; Feme v. Fane, L. R., 20 Eq. Ca., 698; Bristowe v. Whitmore, 9 EL. L. O., 391; Runt v. Bousmanier, 8 Wheat., 174; Veasie v. Williams, 8 How., 134; Wheeler v. Smith, 9 How., 55; Bayne v. United States, 93 H. S., 642; United States v. State Bank, ib., 30; Snell v. Insurance Go., ib., 85; Brown's Gase, 6 C. Ols. R., 171; McFlrath's Gase, 12 ib., 201; McKee's Gase, ib., 504; Fllsworth's Gase 14 ib, 382; Jordan v. Stevens, 51 l\fe., 78; Northrop v. Graves, 19 Conn., 548; Green v. M. <& F. B. B. Go., 1 Beas. Oh., 165; Snyder v.
    
      May, 7 Harris, 238; Broten v. Bice, 26 Graft.,470; Loiondes v. Chisholm, 2 McCord Oh., 455; Bawrence v. Beaubien, 2 Bailey, 623; Hopkins v. Mazyck, 1 Hill Ch., 242; Oulbreath v. Oul-breath, 7 Ga., 64; Underwood v. Brockman, 4 Dana, 309; 3 Pars. Cont., 39; Steamship v. Joliffe, 2 Wall., 457; Bisp. Prin. Eq., 212.)
    
      Mr. Assistant Attorney-General Simons for the defendants:
    First. The fee was paid voluntarily, with full knowledge of all the circumstances. That there can be no recovery in such case is fully established both at law and in equity. (2 Sm. L. O. (Hare & Wallace), 453; 1 Pars. Oont., 5th ed., 466; 'Elliott v. Swartwout, 10 Pet., 153; RuntY. Bousmanire's Adm'rs, 1 Pet., 1; Sehlesinger's Gase, 1 O. Ols. R., 16; Folsom's Gase, 4 ib., 366; McClelland's Gase, 10 ib., 68.)
    Second. The consideration has not wholly failed as alleged. The claimant had for a certain time full benefit of the act, and it is not shown that he ha.s been in any way damnified.
    The fee cannot justly be considered in the light of consideration for the protection afforded, but as a reasonable charge for the service required to secure the benefit of the act, which the claimant has had.
   Drake, Ob. J.,

delivered the opinion of the court:

This action is based on the theory that under the statute mthorizing the registration of trade-marks the United States altered into a contract with every person adopting a trade-mark, md procuring its registration in the Patent Office, to protect lim in the exclusive use thereof for the period of thirty years ; md that the defendants have failed to keep and fulfill, and are lisabled to keep and fulfill their contract with the claimant, be-;ause the Supreme Court of the United States has decided that he trade-mark statute is void for want of Constitutional power n Congress to enact it; and therefore his trade-mark is without he statutory protection for which he had applied, and supposed íe had obtained $ and therefore he sues to recover back the fee )f $25 which he paid to obtain the registration of his trade-nark.

There is in this no ground for this action.

The $25 which the claimant paid was a mere fee, which the ¡tatute required to be paid as a condition precedent to the regis-uation; and the statute nowhere imposes upon the United States the obligation to repay it to the claimant under any cir-mmstances whatever.

If the trade-mark statute could be considered to amount in my respect to a contract between the United States and any noprietor of a trade-mark, it was only that, on paying that fee md otherwise complying with the requirements of the statute, ns trade-mark should be registered in the Patent Office. That vas done in the claimant’s case.

There is nothing in the statute which binds the United States o protect the claimant in the exclusive use of his trade-mark, t simply declares that he shall be entitled to certain legal rights md remedies in connection with its use. It was for him to de-ermine, before paying the fee, whether it was under the statute vorth $25 to him to have his trade-mark registered; and hav-ng decided that it was, and paid the money, the. transaction vas a completed one, with no ground for any resulting liability m either side.

The claimant’s petition is dismissed.  