Street & Smith v. Atlas Manufacturing Co.
1913 U.S. LEXIS 2571 · 231 U.S. 348 · 34 S. Ct. 73 · 58 L. Ed. 262
December 1, 1913 · Docket No 618
Headnotes
Generated summaries- Headnote 1
The Code enumerates categories of cases whose appellate decisions are deemed final, limiting further review unless a specific statutory provision provides otherwise.
- Headnote 2
Certification under § 239 is a mechanism for the Supreme Court to assist a lower appellate court on points of law, not a route for direct appellate review.
- Headnote 3
When a Circuit Court decision is deemed final under the Code, the Supreme Court may, at its discretion, order a certiorari proceeding to examine the case.
- Headnote 4
If the Circuit Court's decree is not covered by the finality provision, and the monetary threshold is met, the aggrieved party may appeal directly without requiring certiorari.
- Headnote 5
These interpretive provisions ensure that earlier statutory language is given effect within the reorganized Code unless Congress clearly intended a change.
- Headnote 6
The Act expressly places trademark disputes within the jurisdiction of the federal circuit courts for initial appellate review.
- Headnote 7
The statute places trademark appeals on the same footing as patent appeals, allowing only discretionary certiorari review by the Supreme Court.
- Headnote 8
The precedent treats trademark cases like patent cases, restricting Supreme Court review to a petition for certiorari and foreclosing a direct appellate right regardless of the amount in controversy.
- Headnote 9
The D.C. Circuit correctly dismissed the appeal, following the statutory scheme that provides no right of appeal as of right in trademark cases.
- Headnote 10
The code lists specific subject‑matter categories whose appellate decisions are deemed final, thereby limiting further review unless another statutory provision applies.
- Headnote 11
These provisions allow the Court to select cases for review, but they do not create an automatic right of appeal.
- Headnote 12
This statutory route applies only to cases not covered by the finality rule of § 128.
- Headnote 13
The act expressly authorizes the Circuit Courts to hear appeals arising under the trademark statute.
- Headnote 14
Congress intended that trademark appeals be reviewed by the same discretionary process used for patent cases, precluding a direct right of appeal.
- Headnote 15
These interpretation rules ensure that earlier statutory schemes are carried into the Code unless Congress clearly indicates a change.
- Headnote 16
The Court relied on Hutchinson, Pierce & Co. v. Loewy, holding that the exclusive certiorari scheme applies to trademark appeals.
- Headnote 17
The D.C. Circuit correctly dismissed the appeal because the trademark appellate scheme does not create a right of appeal as of right.
- Headnote 18
Applying the earlier holdings, the Court affirmed the dismissal of the appeal.
- Headnote 19
The Code’s finality clause specifies which subject‑matter categories are excluded from further review, thereby limiting appellate options unless a special provision applies.
- Headnote 20
Certification under § 239 is a mechanism for obtaining Supreme Court guidance on legal issues, but it does not create a right of appeal.
- Headnote 21
The Court may, upon petition, order a certified case to be heard as if brought by appeal, but the power remains discretionary.
- Headnote 22
This provision creates a statutory right of appeal in cases not covered by § 128, provided the monetary threshold is met.
- Headnote 23
These interpretive rules ensure continuity between prior statutes and the 1911 Code, preventing unintended changes in the law.
- Headnote 24
The statute expressly authorizes the Circuit Courts to hear appeals arising under the Trade‑Mark Act.
- Headnote 25
Congress intended that trademark appeals receive the same exclusive certiorari review as patent appeals, precluding a right of appeal.
- Headnote 26
The patent‑case precedent established that no appeal as of right exists for decisions of the Circuit Courts in patent matters.
- Headnote 27
The precedent was applied to confirm that trademark appellate decisions are not reviewable by direct appeal, regardless of the amount in controversy.
- Headnote 28
Applying §§ 128‑241, the Trade‑Mark Act, and Hutchinson, the Court concluded that no right of appeal existed, leading to dismissal of the petition.
- Headnote 29
The Court read the language of §128 and listed the subject‑matter categories it covers, concluding that the statute’s finality provision does not extend to actions under the Trade‑Mark Act.
- Headnote 30
The opinion explained that §239 allows certification of legal questions, but noted that this mechanism is not the basis for review in the present trademark appeal.
- Headnote 31
The Court noted that §240 permits the Court, upon petition, to order certification for review as if the case had arrived by appeal, reinforcing certiorari as the sole avenue for final decisions.
- Headnote 32
The opinion described §241’s provision for as‑of‑right appeals in non‑final cases, emphasizing the monetary threshold as the trigger for that right.
- Headnote 33
The Court relied on these interpretive provisions to treat the Trade‑Mark Act’s language as if it were incorporated into the Judicial Code, preserving its original effect.
- Headnote 34
The opinion pointed to §17 as the source of appellate jurisdiction for trademark disputes, placing such cases within the Circuit Courts’ jurisdictional reach.
- Headnote 35
The Court read §18 to place trademark appeals on the same footing as patent appeals, meaning that only certiorari, not a right of appeal, is available for Supreme Court review.
- Headnote 36
The Court cited this provision to support the view that Congress intended the same exclusive‑certiorari scheme for trademark cases under §18 of the Trade‑Mark Act.
- Headnote 37
The opinion relied on Hutchinson as controlling authority, stating that the language of §18 places trademark cases within the exclusive‑certiorari framework established for patents.
- Headnote 38
Applying the statutes and Hutchinson precedent, the Court affirmed the dismissal of the appeal for lack of jurisdiction, holding that the D.C. Circuit cannot entertain an as‑of‑right appeal in such cases.
Opinion
delivered the opinion of the court.
This is an appeal from a decree of a Circuit Court of Appeals directing the dismissal of a suit to enjoin infringement of a registered trade-mark and unfair trade. 204 Fed. Rep. 398. The decree was rendered and the appeal allowed after tfie Judicial Code, adopted March 3, 1911, 36 Stat. 1087, C. 231, became effective. Our jurisdiction is challenged by a motion to dismiss, and if we have jurisdiction it is solely because the case was in part one arising under the act of February 20, 1905, infra, under which the trade-mark was registered. Whether in a case so arising the judgment or decree of a Circuit Court of Appeals may be reviewed by this court upon an appeal or writ of error, or only upon a writ of certiorari, is the question for decision.
Section 128 of the Judicial Code declares that, except as provided in §§ 239 and 240, “the judgments and decrees of the Circuit Courts of Appeals shall be final . . . in all cases arising under the patent laws, under the copyright laws, under the revenue laws, and under the criminal laws, and in admiralty cases.” Section 239 permits the certification to this court of questions of law by a Circuit Court of Appeals concerning which it desires instruction for the proper decision of a case within its appellate jurisdiction, and is not important here. Section 240 reserves to this court the discretionary power to require, by certiorari, upon the petition of a party, that any case in which the decision of a Circuit Court of Appeals is made final by the Code be certified here for review and determination, with the same power and authority in the case as if brought here by appeal or writ of error. Section 241 declares that any case in which the decision of a Circuit Court of Appeals is not made final by the Code may be brought here, as of right, by appeal or writ of error, if the matter in controversy exceeds $1,000, besides costs.
These provisions, it is said by counsel for the appellants, enabled them to appeal, as of right, thé statutory amount being involved, and did not remit them to the discretionary writ of certiorari; the argument being that § 128 enumerates the cases in which the decisions of the Circuit Courts of Appeals shall be final and does not include among them cases arising under the trade-mark laws, and that § 241 gives an appeal or writ of error, as of right, in any case in which the decision of the Circuit Court of Appeals is not thus made final, if, as here, the requisite amount is in controversy. If the question turned entirely upon the code provisions relied upon, the argument probably would be convincing. But there are other statutory provisions which must be considered, some within and others without the Code.
The Code does not purport to embody all the law upon the subjects to which it relates. It contains some new provisions and some that are modifications of old ones, but much of it is merely a reenactment of prior laws with appropriate regard to their proper classification and orderly arrangement. Among others, it contains the following provisions bearing upon the extent to which it was intended to affect or repeal prior laws:
“Sec. 292. Wherever, in any law not contained within this Act, a reference is made to any law revised or embraced herein, such reference, upon the taking effect hereof, shall be construed to refer to the section of this Act into which has been carried or revised the provision of law to which reference is so made.
“Sec. 294. The provisions of this Act, so far as they are substantially the same as existing statutes, shall be construed as continuations thereof, and not as new enactments, and there shall be no implication of a change of intent by reason of a change of words in such statute, unless such change of intent shall be clearly manifest.
“Sec. 297. The following sections of the Revised Statutes and* Acts and parts of Acts are hereby repealed: . . . [many sections1, acts, and parts of acts are here enumerated] . . . Also all other Acts and parts of Acts, in so ."far as they are embraced within and superseded by this Act, are hereby repealed; thé remaining portions thereof to be and remain in force with the same effect and to the same extent as if this Act had not been passed.”
Sections 128, 239, 240, and 241 of the Code, as before described, substantially, almost literally, repeat the provisions of § 6 of the Circuit Courts of Appeals Act of March 3, 1891, 26 Stat. 826, c. 517. There is but a single change deserving mention here, and it is that cases arising under the copyright laws are in § 128 added to the enumeration of cases in which the decisions of the Circuit Courts of Appeals are declared final. But this has no bearing upon cases arising under the trade-mark laws, save as it indicates that Congress was extending, rather than contracting, the list of cases in which finality attaches to the decisions of the Circuit Courts of Appeals. Passing this consideration, there is nothing in the Code denoting a purpose to change the existing appellate jurisdiction in trade-mark cases: it is left as it was before.
The Trade-Mark Act of February 20, 1905, 33 Stat. 724, c. 592, dealt with the subject we are considering. By § 17 it invested the Circuit Courts of Appeals with appellate jurisdiction of cases arising under that act, and by § 18 declared that writs of certiorari might be granted by this court for the review of decisions of those courts in such cases “in the same manner as provided for patent cases” by the Circuit Courts of Appeals Act. In placing such trade-mark cases upon the same footing as cases arising under the patent laws, as respects the remedy by certiorari, Congress undoubtedly intended that this remedy should have the same attributes in the one class of cases as in the other. We already have seen that the Circuit Courts of Appeals act, in § 6, made it exclusive in cases arising under the patent laws. Before the adoption of the Code, this court said in Hutchinson, Pierce & Co. v. Loewy, 217 U. S. 457, 460, a case like this: “We are of opinion that this appeal will not he, and that the remedy by certiorari is exclusive. .. . . We think that the language of § 18 places suits brought under the trademark act [February 20, 1905] plainly within the scope of the act establishing the Court of Appeals [March 3, 1891], and that a final decision of that court can be reviewed in this court only upon certiorari,”
Of course, that case and this are not to be confused with others arising under earlier trade-mark laws not containing any provisioná respecting appellate jurisdiction such as are embodied in the act of 1905.
The provisions of that act upon this subject are not. among those enumerated in § 297 of the Code as thereby repealed, and neither do they appear to have been embraced within and superseded by the Code. And while the Circuit Courts of Appeals Act, to which § 18 of the act of 1905 makes reference, has been superseded by being incorporated into the Code, that section has not thereby lost any of its original effect, for § 292 of the Code requires the reference to be construed as if naming the very sections of the Code into which the Circuit Courts of Appeals act has been carried.
It .follows that the motion to dismiss the appeal must be sustained, as was done in Hutchinson, Pierce & Co. v. Loewy, supra.
Appeal dismissed.