that the complainant, who is a licensee, has forfeited his rights under the license, and although other relief is prayed; 2 except when the complaint or defendant's answer clearly shows that the suit is in reality brought to enforce a contract, in which case the suit will be dismissed. So does a suit by the exclusive licensee of a patent against a patentee and another to whom the latter had granted a license when the bill prays an injunction against infringement by the second licensee. A suit for damages to business caused by a threat to sue for infringement and for false statements that articles sold by the plaintiff infringe the deferred patent does not arise under the patent laws of the United States," nor, it has been held, a suit for an injune

tion against the use and disclosure of a trade secret brought after the defendant has applied for a patent embodying the secret process.6

The statute vesting exclusive jurisdiction in the Federal courts of "cases" arising under the patent laws, does not deprive the State courts of power to determine questions arising under the patent laws; for there is a clear distinction between a case and a question, arising under those laws. The former arises when the plaintiff, in his opening pleading, sets up a right under the patent laws as a ground of recovery, and then the State courts have no jurisdiction. The latter may appear in the plea, answer, or testimony, and the State courts are authorized to decide them. It has been said: that a dispute as to the assignability of a license to use a patent arises under the laws of the United States. But suits to determine the title to a patent which are not founded upon Section 4915 of the Revised Statutes of the United States, do not arise under the laws of the United States. 10 All suits which are founded upon Section 4915 of the Revised Statutes arise under the laws of the United States.11 Suits to compel,12 or to set aside,13 the assignment of a patent or copyright,14 to enforce by a judgment for royalties,15 or otherwise, 15a or to set aside a contract

6 Aronson v. Orlov, Mass., July 1917, 116 N. E. 951; infra § 148. Contra, Moyes v. Stirling Co., 71 Fed. 43, a suit for an injunction against similar false statements.

7 Jud. Code, § 256, 36 St. at L. 1087.

8 Pratt v. Paris Gaslight & Coke Co., 168 U. S. 255, 42 L. ed. 458; Herzog v. Heyman, 151 N. Y. 587, 56 Am. St. Rep. 646, 45 N. E. 1127. 9 Walter A. Wood Co. v. Minneapolis E. H. Co., 61 Fed. 256.

10 Montgomery P. S. C. Co. v. Street S. C. Line, 43 Fed. 329.

11 Bernardin v. Northall, 77 Fed. 849. See infra, § 147.

12 Pliable Shoe Co. v. Bryant, 81 Fed. 521; Merrill v. Miller, 28 Mont. 134, 72 P. 423; New Marshall En

gine Co. v. Marshall Engine Co., 223 U. S. 473, 56 L. ed. 513.

13 Harrington v. Atlantic & Pacific Tel. Co., C. C. A., 185 Fed. 493. 14 Hoyt v. Bates, 81 Fed. 641. 15 Albright v. Teass, 106 U. S. 613, 27 L. ed. 295; Dale Tile Mfg. Co. v. Hyatt, 125 U. S. 46, 31 L. ed. 683; Felix v. Scharnweber, 125 U. S. 54, 31 L. ed. 687; Briggs v. United Shoe Mach. Co., 239 U. S. 48 (where the bill also sought the annulment of patents for fraud, a relief which could only be granted at the suit of the United States); Odell v. F. C. Farnsworth Co., 250 U. S. 501, affirming, 257 Fed. 101; Rhodes v. Ashurst, 176 Ill. 351, 52 N. E. 118; affirming 71 Ill. App.

for the use of a patent or copyright, such as a license,16 although an injunction against the manufacture of articles covered by the patent is prayed incidentally; 17 do not arise under the laws of the United States, unless the validity of the patents and copyrights are disputed. On a bill in the State court by the equitable assignee of a patent right, under an agreement executed many months before the patent was applied for, against the subsequent assignee of the patent after it was issued, to compel an assignment to complainant, defendant obtained a removal on a petition averring that it was an assignee for a valuable consideration and without notice, and invoking for his protection U. S. R. S. § 4898; the complainant's agreement not having been recorded. It was held, on motion to remand, that Section 4898 was designed for the protection of bona fide purchasers, and that the question of the construction, application, and enforcement of this statute in their favor, as against a prior equitable assignee, was a Federal question; and the motion was denied.18

An action on a judgment obtained in a patent suit for damages and profits, does not arise under the laws of the United States, 19 although the defendants are the directors of an insolvent corporation, who were not parties to the original suit.20 The cases where jurisdiction will be maintained to grant other relief when the prayer for an injunction against the infringement of a patent or copyright is denied, are described in subsequent sections.21

242.

But see St. Paul v. Starling, 127 U. S. 376, 32 L. ed. 251. 15a Marsh v. Nichols S. S. Co., 140 U. S. 344, 35 L. ed. 413. See Pratt v. Paris Gaslight & Coke Co., 168 U. S. 255, 42 L. ed. 458; see Indiana Mfg. Co. v. Nichols & Co., 190 Fed. 579; Beavers v. Spinks (Mississippi), 26 So., 930.

16 Wilson v. Sandford, 10 How. 99, 13 L. ed. 344; Hartell v. Tilghman, 99 U. S. 547, 25 L. ed. 357; Wade v. Lawder, 165 U. S. 624, 41 L. ed. 851; Standard D. Mfg. Co. v. Nat. Tooth Co., 95 Fed. 291; Kurtz v. Strauss, 100 Fed. 800; Mc

Mullen v. Bowers, C. C. A., 102 Fed. 494; Kurtz v. Straus, 106 Fed. 414, 45 C. C. A. 366; Cely v. Griffin, 113 Fed 981.

17 New Marshall Engine Co. v. Marshall Engine Co., 223 U. S. 473, 56 L. ed. 513; Lefkowitz v. Foster Hose Supporter Co., 161 Fed. 367.

18 American Solid Leather Button Co. v. Empire State Nail Co., 47 Fed. 741.

19 H. C. Cook Co. v. Beecher, 217 U. S. 497, 54 L. ed. 855; affirming 172 Fed. 166. 20 Ibid

21 Infra, §§ 146, 150.

§ 30. Trademark cases. A suit to enjoin the imitation of a trademark does not arise under the laws of the United States, unless the bill shows that the trademark is duly registered, and that it is used on goods intended to be transported to a foreign country or to be used in lawful trade with an Indian tribe,1 or is used in trade among the several States. Where the bill shows this, no difference of citizenship is essential to the jurisdiction. Where the requisite difference of citizenship exists, the District Court may take jurisdiction, either originally or upon removal, of a bill to enjoin the infringement of any trademark, whether registered or not. A suit to restrain unfair competition trade, where the complainant seeks no protection for a registered trademark, does not present a Federal question.5 The cases where, when relief for the infringement of a trademark is denied, jurisdiction will be retained to enjoin unfair competition in trade are described in a subsequent section.

§ 31. Land and mining cases. Where the plaintiff's pleading shows that the decision of the case depends upon the construction of the land or mining laws, the suit arises under the laws of the United States; and if the matter in dispute exceeds the jurisdictional amount, a District Court of the United States may take jurisdiction of the same, either originally, or upon

$30. 1 Trademark Cases, 100 U. S. 82, 25 L. ed. 550; Ryder v. Holt, 128 U. S. 525, 32 L. ed. 529; Hutchinson, Pierce & Co. v. Loewy, 217 U. S. 457, 54 L. ed. 838; Bernstein v. Danwitz, 190 Fed. 604; Allen B. Wrisley Co. v. George E. Rouse S. Co., C. C. A., 90 Fed. 5, dismissing appeal 87 Fed. 589; Warner v. Searle & Hereth Co., 191 U. S. 195, 48 L. ed. 145. See §§ 148, 149, 279, infra.

2 Bernstein v. Danwitz, 190 Fed. 604.

3 Rossmann v. Garnier, C. C. A., 211 Fed. 401.

4 Edison v. Thomas A. Edison, Jr., Chemical Co., 128 Fed. 1013.

5 Burt v. Smith, C. C. A., 71 Fed. 161; Allen B. Wrisley Co. v. George

E. Rouse Soap Co., 90 Fed. 5, 32
C. C. A. 496; dismissing appeal 87
Fed. 589; Illinois Watch Co. v. El-
gin Nat. W. Co., C. C. A., 94 Fed.
667; s. c., 179 U. S. 665, 677, 45
L. ed. 365, 382; A. Leschen & Sons
Rope Co. v. Broderick & Bascom
Rope Co., 134 Fed. 571, 67 C. C. A.

418.

6 Infra, § 148.

$ 31. 1 Florida Cent. & P. R. Co. v. Bell, 176 U. S. 321, 44 L. ed. 486; Northern Pac. Ry. Co. v. Soderberg, 188 U. S. 526, 47 L. ed. 575; affirming 104 Fed. 425, 43 C. C. A. 620; Cheesman v. Shreve, 37 Fed. 36; Jones v. Florida, C. & P. R. Co., 41 Fed. 70; Pierce v. Molliken, 78 Fed. 196; Evans v. Durango Land & Coal Co., 80 Fed. 433, 25

removal. It seems: that this is always the case where the complaint shows that the validity of a land or mining patent is in dispute. An action of ejectment, or of trespass, or a bill to quiet title, where the plaintiff rests his title upon a land or mining patent of the United States, the validity of which defendant does not dispute; does not so arise, unless it involves the construction of the statute under which the patent was issued. Nor does a suit to set aside a land patent solely on account of fraud; nor a suit by a homestead entryman to secure his protection, while making the improvements required by the acts of Congress, from interference by parties who claim the land under the Town Site Act, but whose claims have been rejected by the Secretary of the Interior; nor a suit by any entryman to protect his improvements and claim from waste

8

C. C. A. 531; Gillis v. Downey, C.
C. A., 85 Fed. 483; Florida C. & P.
R. Co. v. Bell, C. C. A., 87 Fed. 369;
Linkswiler v. Schneider, 95 Fed.
203; Nevada Sierra Oil Co. v. Mil-
ler, 97 Fed. 681; Wallula Pac. Ry.
Co. v. Portland & S. Ry. Co., 154
Fed. 902.

2 Mitchell v. Smale, 140 U. S. 406, 35 L. ed. 442; Spokane Falls & No. Ry. Co. v. Ziegler, 167 U. S. 65, 42 L. ed. 79; Miller v. Wattier, 24 Fed. 49; Dunton v. Muth, 45 Fed. 390; Walker v. Richards, 55 Fed. 129; Southern Pac. R. Co. v. Townsend, 62 Fed. 161; McCune v. Es sig, C. C. A., 122 Fed. 588; affirm ing 118 Fed. 273.

3 Mitchell v. Smale, 140 U. S. 406, 35 L. ed. 442; Florida Cent. & P. R. R. Co. v. Bell, 176 U. S. 321, 44 L. ed. 486; Pierce v. Molliken, 78 Fed. 196; McCune v. Essig, C. C. A., 122 Fed. 588; affirming 118 Fed. 273.

4 Bonin v. Gulf Company, 198 U. S. 115, 49 L. ed. 970; Los Angeles Farming & Milling Co. v. Hoff, 48 Fed. 340; Washington V. Island Lime Co., 117 Fed. 777.

5 In re Helena & L. Smelting & Reduction Co., 48 Fed. 609; Argo naut Min. Co. v. Kennedy Mining & Milling Co., 84 Fed. 1; Peabody Gold-Min. Co. v. Gold Hill Min. Co., 97 Fed. 657.

6 Hoadley v. City and County of San Francisco, 94 U. S. 4, 24 L. ed. 34.

7 Hopkins v. Walker, 244 U. S. 486; Lancaster v. Kathleen Oil Co., 241 U. S. 551; State ImprovementDevelopment Co. v. Leininger, 226 Fed. 884.

8 Holland v. Hyde, 41 Fed. 897. Contra, where the bill also alleged that the patent had been issued without a compliance with the statnte as to notice or proofs, and without authority at law. Cates v. Producers' & Consumers' Oil Co., 96 Fed. 7.

9 Blackburn v. Portland G. M. Co., 175 U. S. 571, 44 L. ed. 276; Shoshone M. Co. v. Rutter, 177 U. S. 505, 44 L. ed. 864; Butler v. Shafer, 67 Fed. 161; King v. Lawson, 84 Fed. 209. But see Jones v. Florida, C. & P. R. Co., 41 Fed. 70.