[Inclosure in No. 138.] Mr. Isaacs to Mr. Evarts. NEW YORK, October 30, 1879. SIR: It is stated in the newspapers of this date, upon the authority of a dispatch from Bucharest, that "the United States minister at Vienna is expected at Bucharest shortly, to formally recognize Roumanian independence and establish diplomatic relations between that country and the United States." While disavowing our belief in the accuracy of this statement, we respectfully ask the State Department to communicate with the ministry at Vienna, to the end that this government may not be committed to an act of recognition of Roumanian independence while it appears that the condition precedent upon which, by the treaty of Berlin in 1878, Roumania was to become an independent state, has not been complied with, and pending the recognition of Roumania by the powers which conditionally created her a state. The Department will recall the effort made last year, with undue haste, upon the part of the Roumania authorities to secure, from the newly arrived United States consul at a Danubian port, formal recognition of the new state. At that time (October, 1878) the representative of this board was courteously advised at the Department that the consul would exceed his authority if he undertook to commit the Ünited States in the manner so confidently declared on the part of Roumania. The Government of Roumania is straining every nerve to secure from Europe a modification of the condition imposed by the Berlin Congress-a condition that simply demands civil and religious liberty for all the inhabitants of the new state. The oppressive laws enacted and enforced in Roumania since 1856, and relating exclusively to Jewish inhabitants, have so often resulted in persecution and outrage affecting liberty and life, that the representatives of foreign governments accredited to Bucharest have unitedly protested against the crimes committed in the name of law, the odious discrimination against inoffensive and industrious inhabitants whose single "fault" was their religious belief. The cordial co-operation of our government in this international defense of a persecuted class was signally beneficial, and the United States consul at Bucharest from 1870 to 1876 had the opportunity of rescuing many fugitives from persecution, while his intelligent performance of duty at an extraordinary crisis received the warm approval of the Secretary of State. (Letter of Mr. Fish to Mr. Peixotto, May 13, 1872. Ex. Doc. No. 75, p. 14.) We shall not dwell upon the unhappy record, which is familiar to the Department, of Jewish persecution in Roumania. The congress of European powers at Berlin solemnly enacted, as the basis of Roumanian independence, the recognition of the principle of civil and religious liberty. The Roumanian executive and legislative authorities have, after repeated and ineffectual attempts to move the governments of Great Britain, France, Germany, and Italy, undertaken a perfunctory performance of the condition by appearing to consent, "as a compromise between the views of the prince and the chambers," that about one thousand Jews shall be entitled to enfranchisement, each individual of the other 250,000 Hebrews, the great mass of whom are natives, to continue without civil rights, unless hereafter, by favor of the chambers, they shall be permitted to make separate application for naturalization, which will not be granted save at an expense and after delay tantamount to the denial of justice. This subterfuge is the outcome of over a year's study, and is supposed to satisfy the civilized world, and to comply with the condition of the Berlin treaty. Such being the facts, if Roumania asks direct recognition, we do not doubt for an instant the decision of our government, which first in the annals of mankind "proclaimed liberty throughout the land unto all the inhabitants thereof." We are anxious, however, that the persistent effort of Roumania to obtain what is so dearly prized, active diplomatic and commercial relations with the United States, may not, even in appearance, be attended with success. We are assured that the Department would profoundly regret if, by inadvertence, the powerful moral support of the United States should seem to be given to Roumania in her effort to enjoy the fruits of independence while evading its obligations. We therefore present these views for the consideration of the Department. Very respectfully, MYER S. ISAACS, President Board. S. WOLF, Resident Member, ADOLPH L. SANGER, Secretary. No. 265.] No. 28. Mr. Kasson to Mr. Evarts. LEGATION OF THE UNITED STATES, SIR: The journals have recently announced a decision by the United States Supreme Court declaring the national trade-mark law unconstitutional. I beg to be advised whether this decision will give occasion to modify your instructions touching a trade-mark convention with Servia and Roumania, and also what information on the subject I shall be authorized to give in answer to inquiries which interested parties here may address to me. I have, &c., No. 29. JOHN A. KASSON. No. 269.] Mr. Kasson to Mr. Evarts. LEGATION OF THE UNITED STATES, Vienna, December 18, 1879. (Received January 6, 1880.) SIR: When Civil Engineer J. B. Eads, of the Mississippi River Commission, appointed under authority of Congress, was recently in Vienna, he desired the intervention of this legation to obtain certain information touching the river improvements of this empire. In partial response to that request, I now transmit to the Department, by way of the United States consul at Hamburg, a package embracing certain printed documents in the German language, relating to this improvement, together with a map of the river Danube, showing the nature of the improvements, as I received them from the foreign office. Accompanying this dispatch is a translation of the note from the foreign office, which was brought to this legation with the documents. The address of the package is to the president of the Mississippi River Commission-wherever the office of the commission may be-and is forwarded under cover to the Department of State. I have, &c., JOHN A. KASSON. [Inclosure in No. 269.] The Foreign Office at Vienna to Mr. Kasson. [Memorandum (received by Mr. Kasson December 15, 1879).-Translation.] As is known to the honorable legation, Mr. James B. Eads, a civil engineer fron Saint Louis, employed at the regulation of the Mississippi River, was ordered by the Government of the United States of America to study the water-works and river regulations in Austria-Hungary, especially to visit Theiss and Szegedin. In September last Mr. Eads was presented personally through the secretary of legation, Mr. John F. Delaplaine, and a letter of recommendation to the royal Hungarian minister, President de Tisza, was given him. At the same time the ministry of foreign affairs requested the imperial and royal ministry of commerce to give Mr. Eads such books, papers, and plans of water-works constructed in this part of the empire as would be of use to his high government. As we now hear that the civil engineer, Mr. Eads, has, after finishing his studies, returned to his country, the ministry of foreign affairs has the honor to transmit to the honorable legation the following papers, which it has just itself received, with the request to send them to Mr. Eads, viz: (1.) A map of the river Danube, from Stein to Theben, in Lower Austria, showing the water-works constructed up to the end of 1878. (2.) Report and motions of the committee appointed in 1868 by the commission for the regulation of the Danube. (3.)The Regulation of the Danube near Vienna," published May 30, 1875, at the time of the solemn opening of the navigation in the new river-bed. (4.) "The Regulation of the Danube near Vienna," a lecture delivered the 18th March, 1876, before the Society of Austrian Architects and Engineers, by the Chevalier Gustav von Wex. (5.) "Collection of Reflections on the running, blocking, and breaking up of the ice in the river Danube and in the Danube Canal at Vienna in the months of January and February, 1876," by Baron Wm. von Engerth. VIENNA, December 13, 1879. No. 142.] No. 30. Mr. Evarts to Mr. Kasson. DEPARTMENT OF STATE, Washington, December 19, 1879. SIR: I have to acknowledge the receipt of your No. 265, relative to the decision of the Supreme Court of the United States (October term, 1879), declaring the legislation of Congress, contained in sections 4937 to 4947 Revised Statutes, concerning trade-marks unconstitutional; and, referring to the proposed conventions on the subject, which you were instructed by my communication of July 30, last, to negotiate with Servia and Roumania, I accordingly inclose a copy of the decision. You will see by one of the latter clauses of the decision that the court desired "to be understood as leaving the whole question of the treaty-making power of the general government over trade-marks, and the duty of Congress to pass any laws necessary to carry such treaties into effect, untouched." But Congress is at present occupied in the consideration of the law of trade-marks as affected by the decision of the court. Several means of meeting the questions raised by that decision have been suggested, one by an amendment of the Constitution and another by a modification of the enactments above referred to. Under the circumstances, therefore, it is considered the better course to delay the proposed negotiations on the subject with Servia and Roumania. I am, &c., On certificates of division in opinion between the judges of the circuit court of the United States for the southern district of New York. 1 THE UNITED STATES, PLAINTIFFS, v. W. W. JOHNSON, T. E. MCNAMARA, AND N. S. REEDER. } On a certificate of division in opinion between the judges of the circuit court of the United States for the southern district of Ohio. Defendants being indicted for violations of the civil and criminal statutes of the United States for the protection of trade-marks, the circuit judges of the courts where the indictments were pending were divided in opinion as to the constitutionality of those laws, and certified that division to the Supreme Court Held by that court: 1. That property in trade-marks has long been recognized and protected by the common law and by the statutes of the States, and does not owe its existence to the act of Congress providing for their registration in the Patent Office. 2. That a trade-mark is neither an invention or discovery, nor the writing of an author, within the meaning of the clause of the Constitution in regard to securing to authors and inventors the exclusive use of their writings and discoveries. 3. That as a regulation of commerce, if trade marks can in any case be the subject of Congressional action, that action is limited by the Constitution to their use in "commerce with foreign nations, among the several States and with the Indian tribes." 4. That the legislation of Congress in regard to trade-marks contains nothing in its terms or in its essential character which looks to a regulation thus limited, but in its language it embraces and was intended to embrace all commerce, including that between citizens of the same State. 5. As the statute is so framed that it is impossible to separate that which has reference to commerce within its control and that which is not, and as Congress certainly did not intend to pass the limited registration law which such a construction would imply, the whole legislation must fall as being void for want of constitutional authority. Mr. Justice MILLER delivered the opinion of the court: The three cases whose titles stand at the head of this opinion are criminal prosecutions for violations of what is known as the trade-mark legislation of Congress. The first two are indictments in the southern district of New York, and the last is an information in the southern district of Ohio. In all of them the judges of the circuit courts in which they are pending have certified to a difference of opinion on what is substantially the same question, namely, are the acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States? The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sections seventy-seven to eighty-four, inclusive, of the act of July 8, 1870, entitled "An act to revise, consolidate, and amend the statutes relating to patents and copyrights." The part of this act relating to trade-marks is embodied in chapter two, title sixty, sections 4937 to 4947 of the Revised Statutes. It is sufficient at present to say that they provide for the registration in the Patent Office of any device in the nature of a trade-mark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that act to his exclusive use; and they make the wrongful use of a trademark, so registered, by any other person, without the owner's permission, a cause of action in a civil suit for damages. Six years later we have the act of August 14, 1876 (19 U. S. Statutes, 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of trade-marks registered in pursuance of the statutes of the United States, on which the informations and indictments are founded in the cases before us. It The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of the use of that symbol by all other persons, has been long recognized by the common law and chancery courts of England and of this country, and by the statutes of some of the States. is a property right for which damages may be recovered in an action at law, and the violation of which will be enjoined by a court of equity, with compensation for past infringement. This property and the exclusive right to its use were not created by the act of Congress, and do not now depend upon that act for their enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to the act of Congress and remain in full force since its passage. These propositions are so well understood as to need no citation of authorities or elaborate argument to prove them. The property in trade-marks and the right to their exclusive use, resting on the laws of the States in the same manner that other property does, and depending, like the great body of the rights of person and of property, for their security and protection on those laws, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall depend, the period of their duration, and the legal remedies for their protection, if such power exists at all, must be found in some clause of the Constitution of the United States, the instrument which is the source of all the powers that Congress can lawfully exercise. In the argument of these cases this seems to be conceded, and the advocates for the validity of the acts of Congress on this subject point to two clauses of that instrument, in one or in both of which, as they assert, sufficient warrant may be found for this legislation. The first of these is the eighth clause of section eight of the first article of the Constitution. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient operation those expressly given, authorizes Congress, by the clause referred to, "to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the act to which we have referred, entitled "An act to revise, consolidate, and amend the statutes relating to patents and copyrights," terms which have long since become technical as referring, the one to inventions and the other to writings of authors, it is a reasonable inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clanse of the Constitution. It may also be safely assumed that until a critical examination of the subject in the courts became necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its support. Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties. The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than sudden invention. It is often the result of accident rather than design, and when under the act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, there is required originality. And while the word writings may be liberally construed, as it has been, to include original designs for engravings, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like. The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it. At common law the exclusive right to it grows out of the use of it, and not its mere adoption. By the act of Congress this exclusive right attaches upon registration. But in neither case does it depend upon novelty, upon invention, upon discovery, or upon any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look in vain in the statute for any other qualification or condition. If the symbol, however plain, simple, old, or well known, has been first appropriated by the claimant as his distinctive trade-mark, he may by registration secure the right to its exclusive use. While such legislation may be a judicious aid to the common law on the subject of trade-marks and may be within the competency of legislatures whose general powers embrace that class of subjects, we are unable to see any such power in the constitutional provision concerning authors and inventors and their writings and discoveries. The other clause of the Constitution supposed to supply the requisite authority in Congress is the third of the same section, which, read in connection with the granting clause, is as follows: "The Congress shall have power to regulate commerce with foreign nations, and among the several States, and with the Indian tribes.” The argument is that the use of a trade-mark-that which alone gives it any valueis to identify a particular class or quality of goods as the manufacture, produce, or property of the person who puts them in the general market for sale. That the sale of the article so distinguished is commerce. That the trade-mark is, therefore, a useful and valuable aid or instrument of commerce, and its regulation by virtue of the above provision of the Constitution belongs to Congress, and that the act in question is a lawful exercise of this power. It is not every species of property which is the subject of commerce, or which is used or even essential in commerce, which is brought by this clause of the Constitution within the control of Congress. The barrels and casks, the bottles and boxes in which alone certain articles of commerce are kept for safety and by which their contents are transferred from the seller to the buyer, do not thereby become subjects of Congressional legislation more than other property. (Nathan v. Louisiana, 8 How, 73.) In the case of Paul v. Virginia, 8 Wallace, 168, this court held that a policy of insurance made by a corporation of one State on property situated in another was not an article of commerce, and did not come within the purview of the clause of the Constitution we are considering. "They are not," says the court, "commodities to |