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Argument for Petitioner.

of being sued only in the district of its residence? or has it waived that privilege?

That the place or district where suits in the courts of the United States are to be brought is a mere privilege, which the defendant may waive, is well established. Ex parte Schol lenberger, 96 U. S. 369; St. Louis & San Francisco Railway v. McBride, 141 U. S. 127; Central Trust Co. v. McGeorge, 151 U. S. 129.

The present suit being founded on the special act of Congress relating to trade-marks, the privilege of being sued only in the district of the defendant's residence, provided by the act of 1887 as amended, does not apply.

Of course, it is not intended to be argued in behalf of the petitioner that this leaves a plaintiff to sue the defendant in any place or district he may select, as the learned Circuit Judge suggested at the argument in the Circuit Court. But it is argued that, as the trade-mark statute, unlike the act of 1887, does not confer upon defendants the privilege of being sued only in the districts of their residence, it leaves it to the Circuit Court to assume jurisdiction whenever the ordinary conditions to its exercise exist, i.e. whenever the defendant is present in such a way that courts of general jurisdiction may assert their authority over his person or property. And in the case of a foreign or non-resident corporation it is abundantly established that this condition exists whenever such foreign or non-resident corporation comes within the territorial limits of a State and Federal district, and there carries on business by agents or servants pursuant to local laws providing, as a condition to such corporation doing business there, that it shall submit to the authority of the courts of the place where it is thus permitted to exercise its functions. Ins. Co. v. French, 18 How. 404; Railroad Co. v. Harris, 12 Wall. 65; Ex parte Schollenberger, 96 U. S. 369; Railroad Co. v. Koontz, 104 U. S. 5, 10; St. Clair v. Cox, 106 U. S. 350; N. E. Mut. Ins. Co. v. Woodworth, 111 U. S. 138; In re Louisville Underwriters, 134 U. S. 488.

This suit being, therefore, as above stated, founded upon a special act of Congress, is not subject to the operation of the

Argument for Petitioner.

general Judiciary Act, as amended. In re Hohorst, 150 U. S. 653; United States v. Mooney, 116 U. S. 104.

By doing business in the State the laws of which require a non-resident corporation to designate a person upon whom service may be made, or, in case such designation be not made, that service may be made upon its managing agent, the defendant waived its privilege of being sued only in the place of its inhabitancy; and the suit not being one where jurisdiction depends only on diverse citizenship, the court is not only competent to take cognizance of the case, but may subject the defendant to its process.

Even if this case can be considered as subject to the operation of the act of 1887, as amended, the decisions in cases where the sole ground of jurisdiction was diverse citizenship do not apply, because, as previously observed, that is not the only ground of jurisdiction here. This is notably true of the cases of Shaw v. Quincy Mining Co., 145 U. S. 444; Southern Pacific Company v. Denton, 146 U. S. 202; and Empire Coal Co. v. Empire Coal & Mining Co., 150 U. S. 159, relied upon by the respondents' counsel. Those were cases where the sole ground of jurisdiction was diverse citizenship, and both parties being nonresidents, it was held, upon a construction of the statute which provided that in such cases suit may be brought only in the place of the residence of the plaintiff or the defendant, the actions could not be maintained in any other district.

Therefore, conceding that the act of 1887, as amended, applies, this case rests upon the other clause which provides that "no civil suit shall be brought before either of the said courts against any person by any original process or proceeding in any other district than that whereof he is an inhabitant;" and under this clause it is insisted that the defendant may waive its privilege of being sued in its place of residence, and that it has waived it by doing business and having agents in the State and city of New York. Railroad Co. v. Harris, 12 Wall. 65; St. Clair v. Cox, 106 U. S. 350; New York, Lake Erie & Western Railroad v. Estill, 147 U. S. 591.

VOL. CLX-15

Opinion of the Court.

Mr. William A. Abbott opposing.

MR. JUSTICE GRAY, after stating the case, delivered the opinion of the court.

This case presents a single question of jurisdiction of the Circuit Court of the United States, and involves no consideration of the merits of the cause of action asserted in the bill filed in that court.

By the act of March 3, 1881, c. 138, "owners of trade-marks used in commerce with foreign nations, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign country or tribe which by treaty, convention or law affords similar privileges to citizens of the United States, may obtain registration of such trademarks," by causing to be recorded in the Patent Office a statement and description thereof, and complying with other requirements of the act. 21 Stat. 502.

By section 7 of that act, "any person who shall reproduce, counterfeit, copy, or colorably imitate any trade-mark registered under this act, and affix the same to merchandise of substantially the same descriptive properties as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trade-mark at the suit of the owner thereof; and the party aggrieved shall also have his remedy, according to the course of equity, to enjoin the wrongful use of such trade-mark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases, without regard to the amount in controversy."

By section 11, nothing in this act shall be construed "to give cognizance to any court of the United States in an action or suit between citizens of the same State, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe.”

Opinion of the Court.

While section 7 provides that "courts of the United States shall have original and appellate jurisdiction in such cases, without regard to the amount in controversy;" and while the provision of section 11, that nothing in the act shall be construed to give "cognizance to any court of the United States in an action or suit between citizens of the same State," unless the trade-mark is used in commerce with a foreign country or an Indian tribe, implies that a suit for infringement of a trade-mark used in such commerce may be maintained in some court of the United States; yet neither of those sections, and no other provision of the act, specifies in what court of the United States, or in what district, suits under the act may be brought; but the jurisdiction of such suits, in these respects, is left to be ascertained from the acts regulating the jurisdiction of the courts of the United States.

At the time of the passage of the Trade-Mark Act of 1881, the only act to which reference could be had to ascertain such jurisdiction was the Judiciary Act of March 3, 1875, c. 137, § 1, providing that "the Circuit Courts of the United States shall have original cognizance, concurrent with the courts of the several States, of all suits of a civil nature, at common law or in equity, where the matter in dispute exceeds, exclusive of costs, the sum or value of five hundred dollars, and arising under the Constitution or laws of the United States, or treaties made, or which shall be made, under their authority," "or in which there shall be a controversy between citizens of different States," "or a controversy between citizens of a State and foreign States, citizens or subjects." "But no person shall be arrested in one district for trial in another in any civil action before a Circuit or District Court. And no civil suit shall be brought before either of said courts against any person, by any original process or proceeding, in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving such process or commencing such proceeding," except in certain cases not material to the present inquiry. 18 Stat. 470.

The restriction of jurisdiction, with respect to amount, in the act of 1875, was perhaps superseded, as to trade-mark

Opinion of the Court.

cases, by the express provision of section 7 of the act of 1881; but the jurisdiction, with regard to the court, as well as to the district, in which such suits should be brought, was controlled by the act of 1875, as the only act in force upon the subject. Under the provision of that act, which allowed a defendant to be sued in the district of which he was an inhabitant, or in that in which he was found, a corporation could doubtless have been sued either in the district in which it was incorporated, or in any district in which it carried on business and had a general agent. Ex parte Schollenberger, 96 U. S. 369, 377; New England Ins. Co. v. Woodworth, 111 U. S. 138, 146; Shaw v. Quincy Mining Co., 145 U. S. 444, 452; Southern Pacific Co. v. Denton, 146 U. S. 202, 207.

But when this suit was brought, the first section of the Judiciary Act of 1875 had been amended by the act of March 3, 1887, c. 373, as corrected by the act of August 13, 1888, c. 866, in the parts above quoted, by substituting, for the jurisdictional amount of $500, exclusive of costs, the amount of $2000, exclusive of interest and costs; and by striking out, after the clause "and no civil suit shall be brought before either of said courts against any person by any original process or proceeding in any other district than that whereof he is an inhabitant," the alternative, "or in which he shall be found at the time of serving such process, or commencing such proceeding," and by adding "but where the jurisdiction is founded only on the fact that the action is between citizens of different States, suit shall be brought only in the district of the residence of either the plaintiff or the defendant." 24 Stat. 552; 25 Stat. 433.

The last clause is added by way of proviso to the next preceding clause, which, in its present form, forbids any suit to be brought in any other district than that of which the defendant is an inhabitant; and the effect is that, in every suit between citizens of the United States, when the jurisdiction is founded upon any of the grounds mentioned in this section, other than the citizenship of the parties, it must be brought in the district of which the defendant is an inhabitant; but when the jurisdiction is founded only on the fact that the par

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