corporation was concerned in the litigation, for in such case the record did not show that the case was one arising under the Constitution and laws of the United States.14

§ 28. National banking associations. The Judicial Code provides concerning suits to which national banks are parties: that the District Courts of the United States shall have jurisdiction "of all cases commenced by the United States, or by direction of any officer thereof, against any national banking association, and cases for winding up the affairs of any such bank; and of all suits brought by any banking association established in the district for which the court is held, under the provisions of title 'National Banks,' Revised Statutes, to enjoin the Comptroller of the Currency, or any receiver acting under his direction, as provided by said title. And all national banking associations established under the laws of the United States shall, for the purposes of all other actions by or against them, real, personal, or mixed, and all suits in equity, be deemed citizens of the States in which they are respectively located."1 This differs from the previous law, which specifically provided: "In such cases the Circuit and District Courts shall not have jurisdiction other than such that they would have in cases between individual citizens of the same State." 2 This omission does not extend the jurisdiction beyond that granted by the previous statute.3

Under the former law it was held as follows: This deprives the Federal courts of jurisdiction of a suit by a national bank located in the District of Columbia unless some other Federal question is involved. The Federal Court has no jurisdiction of a suit by a stockholder against the directors of a National Bank

14 Seattle & M. R. Co. v. State, 52 Fed. 594; distinguishing Union Pac. R. Co. v. City of Kansas, 115 U. S. 1, 29 L. ed. 319.

§ 28. 1§ 24, subd. 16, 36 St. at L. 1087.

Leather

2 St. at L. 433, § 4. Manufacturers' Nat. Bank v. Cooper, 120 U. S. 778, 30 L. ed. 816; affirming Cooper v. Leather Manufacturers' Nat. Bank, 29 Fed. 161; Ex parte Jones, 164 U. S. 691, 41 L. ed. 601; Thomas V. National

Bank of D. O. Mills, 106 Fed. 438, 45 C. C. A. 407. A State court can issue the writ of mandamus against the officers and directors in a proper case. In re Tuttle, 170 N. Y. 9. In re Fisher's Estate (Iowa 1905), 102 N. W. 797.

3 Herrmann v. Edwards, 238 U. S. 107, 117, 57 L. ed. 1224, 35 Sup. Ct. 839.

4 Am. Nat. Bank v. Tappan, 174 Fed. 431.

for the violation of their liability at common law when no express violation of a Federal statute is set forth in the plaintiff's pleading.5

A Federal Court has jurisdiction of such a suit: by a receiver appointed by the Comptroller of the Currency since it is brought in the course of winding up the affairs of the bank. Of a suit for the appointment of a receiver of a national bank; 7 of suits against the agents appointed by the shareholders of national banks in pursuance of the statutes of the United States; of a suit to charge a national bank with liability as a stockholder in another corporation, where the power of the defendant to hold stock is disputed; of a suit by a national bank upon the bond of its cashier, conditioned upon the performance of his duties "according to the law and the by-laws" of the bank; 10 of a suit against a national bank and its receiver to enforce a covenant in a lease to indemnify the lessor from loss of rent in case of re-entry because of a default in payment; 11 of a suit by stockholders against directors because of damage caused by their violation of a provision of the National Banking Laws; of a suit by a national bank against officers to recover the amount of loans made in violation of the Revised Statutes of the United States; 13 of a suit by a creditor to recover money loaned to a national bank, where it is alleged that plaintiff was deceived. and defrauded by a violation of the acts of Congress; 14 but

5 Ibid. Herrmann v. Edwards, 238 U. S. 107, 57 L. ed. 1224, 35 Sup. Ct. 839.

V.

6 Bates v. Dresser, 229 Fed. 772. 7 Snohomish County Bank Puget Sound Nat. Bank, 81 Fed. 518; Lake Nat. Bank V. Wolfeborough Sav. Bank, C. C. A., 78 Fed. 517. For the jurisdiction of suits by or against such receivers, see infra, § 35.

8 International Trust Co. v. Weeks, 203 U. S. 364, 51 L. ed. 224; Snohomish County v. Puget Sound Nat. Bank, 81 Fed. 518; Guarantee Co. of North Dakota v. Hanway, 104 Fed. 369, 44 C. C. A. 312; International Trust Co. v. Weeks, 116

12

Fed. 898; Weeks v. International
Trust Co., 125 Fed. 370, 60 C. C.
A. 236; reversing 116 Fed. 898.

9 California Nat. Bank v. Kennedy, 167 U. S. 362, 42 L. ed. 198. 10 Walker v. Windsor Nat. Bank, C. C. A., 56 Fed. 76.

11 Providence Bldg. Co. v. Atlantic Nat. Bank, 228 Fed. 814.

12 Chesbrough v. Woodworth, 244 U. S. 72; Huff v. Union Nat. Bank, 173 Fed. 333.

13 National Bank of Commerce v. Wade, 84 Fed. 10; Abbott v. National Bank of Commerce, 56 P. 376, 20 Wash. 552.

14 Bailey v. Mosher, 63 Fed. 488, 11 C. C. A. 304, 27 U. S. App. 339.

15

not, where his pleading makes no reference to such statutes; nor of a suit by a depositor, for false representations in advertisements, statements and reports; 16 of a suit by a creditor of a national bank against a stockholder of the same to enforce a statutory liability created by U. S. R. S. § 5151; 17 of a suit by a stockholder to prevent obedience by the bank to a statute which is obnoxious to the Federal Constitution; 18 of a suit by a stockholder for an accounting by the directors for losses, caused through their disobedience of acts of Congress; of a suit in which there is a question as to the validity of a tax on a shareholder in a national bank.19 The Federal courts have jurisdiction of a suit by a national bank to assert a right protected by the Constitution of the United States, 20 or which it derives from an act of Congress,21 when the construction of the Constitution or statute is necessarily involved. Where all the parties on the other side of the controversy are citizens of a different State from that where the national bank is located, the District Court may have jurisdiction of the case if the residence and value of the subject-matter fulfill the statutory requirements.22

§ 29. Patent and copyright cases. Where the bill prays an injunction against the infringement of a patent or copyright, the suit arises under the laws of the United States; although the defendant does not dispute the validity of the patent or copyright; but resists his defense upon a license or other contract giving him a right to use the same,1 or upon the contention

15 Stuart v. Bank of Staplehurst (Nebraska), 78 N. W. 298.

16 Prescott v. Haughey, 65 Fed. 653.

17 Wyman v. Wallace, 201 U. S. 230, 50 L. ed. 738.

18 Larabee v. Dolley, 175 Fed. 365, 384.

19 Richards v. Rock Rapids, 72 Iowa, 77, 33 N. W. 372.

20 Larabee v. Dolley, 175 Fed. 365, 384.

21 Ibid.

22 Petri v. Commercial Nat. Bank, 142 U. S. 644, 35 L. ed. 1144; First Nat. Bank v. Forest, 40 Fed. 705.

$ 29. 1 White v. Rankin, 144 U. S. 628, 36 L. ed. 69; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 46 L. ed. 910; reversing 109 Fed. 497, 48 C. C. A. 349; The Fair v. Kohler Die Specialty Co., 228 U. S. 22, where plaintiff's bill stated that defendant had obtained but had forfeited a li

cense; Healy v. Sea Gull Specialty Co., 237 U. S. 479, where the plaintiff alleged this and also a stipulation in the license that in case of suit for infringement the measure of recovery should be the same as the royalty therein agreed

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.3 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,5 nor, it has been held, a suit for an injune

to; Walter A. Wood H. Co. V. Minneapolis E. H. Co., 61 Fed. 256; Elgin W. P. & P. Co. v. Nichols, C. C. A., 65 Fed. 215; Dunham v. Bent, 72 Fed. 60; Young R. L. N. Co. v. Young L. N. Co., 72 Fed. 62; Atherton Mach. Co. v. AtwoodMorrison Co., C. C. A., 102 Fed. 949; reversing 99 Fed. 113, 43 C. C. A. 72; Victor Talking Mach. Co. v. The Fair, C. C. A., 123 Fed. 424; Wooster v. Crane & Co., C. C. A., 147 Fed. 515. But see Hartell v. Tilghman, 99 U. S. 547, explained in White v. Rankin, 144 U. S. 628, 636638; Harper Bros. v. Klaw, 232 Fed. 609, (a suit to enjoin licensees of a playwright from producing a photoplay with the same plot); Silver v. Holt, 84 Fed. 809; McMullen v. Bowers, 102 Fed. 494, 42 C. C. A. 470; Holt v. Silver, 169 Mass. 435, 48 N. E. 837.

2 Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 46 L. ed. 910; Harrington v. Atlantie & Pacific Tel. Co., 143 Fed. 329; Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., C. C. A., 77 Fed. 288, 294, 25 C. C. A. 267, 35 L.R.A. 728; Rupp & Wittgenfeld Co. v. Elliott, C. C. A., 131 Fed. 730, 65 C. C. A. 544; Indiana

Mfg. Co. v. Nichols & Shepard Co.,
190 Fed. 579. But see Cortelyou v.
Johnson & Co., 207 U. S. 196, 28
Sup. Ct. 105, 52 L. ed. 167; Bobbs-
Merrill Co. v. Straus, 210 U. S. 339,
345, 28 Sup. Ct. 722, 52 L. ed. 1086;
Crown Cork & Seal Co. v. Brooklyn
Bottle Stopper Co., C. C. A., Second
Ct., 175 Fed. 1019, 99 C. C. A. 664;
Am. Graphophone Co. Victor
Talking Mach. Co., C. C. A., 188
Fed. 428; s. c., 188 Fed. 431.

V.

3 Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 287, 46 L. ed. 910, 913. See Herzog v. Heyman, 151 N. Y. 587, 56 Am. St. Rep. 646, 45 N. E. 1127; New Marshall Engine Co. v. Marshall Engine Co., 223 U. S. 473, 56 L. ed. 513; Briggs v. United Shoe Co., 239 U. S. 48; American Well Works Co. v. Layne and Bowler Co., 241 U. S. 257; American Graphophone Co. v. Boston Store of Chicago, 225 Fed. 785; Hiner v. C. G. Aldrich Co., 255 Fed. 785; Chadeloid Chemical Co. v. Johnson, C. C. A., 203 Fed. 993.

4 Moyes v. Stirling Co., 71 Fed. 43; Excelsior Wood & Pipe Co. v. Pac. Bridge Co., 185 U. S., 282 Fed. 910.

5 Charroin v. Romort Mfg. Co., 236 Fed. 1011.

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 distinetion 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.8 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,18 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.