Messrs. Hugh K. Wagner and Leonard J. Langbein for appellants. [231 U.S. 348, 349] Messrs. James Love Hopkins and Nelson Thomas for appellees.
Mr. Justice Van Devanter 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 trademark and unfair trade. 47 L. R. A. (N. S.) 1002, 122 C. C. A. 568, 204 Fed. 398. The decree was rendered and the appeal allowed after the Judicial Code, adpted March 3, 1911 (36 Stat. at L. 1087, chap. 231, U. S. Comp. Stat. Supp. 1911, p. 128), 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 [231 U.S. 348, 350] which the trademark 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 appeal 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, the 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 trademark 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 [231 U.S. 348, 351] 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 re-enactment 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:
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, [231 U.S. 348, 352] 1891 (26 Stat. at L. 826, chap. 517, U. S. Comp. Stat. 1901, p. 488). 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 trademark 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 trademark cases: it is left as it was before.
The trademark act of February 20, 1905 (33 Stat. at L. 724, chap. 592, U. S. Comp. Stat. Supp. 1911, p. 1459), 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 trademark 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, P. & Co. v. Loewy, 217 U.S. 457, 460 , 54 S. L. ed. 838, 839, 30 Sup. Ct. Rep. 613, a case like this: 'We are of opinion that this appeal will not lie, 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.' [231 U.S. 348, 353] Of course, that case and this are not to be confused with others arising under earlier trademark laws not containing any provisions 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, P. & Co. v. Loewy, supra.