Notwithstanding any other provision of this Act, the remedies given to the owner of the right infringed shall be limited as follows (a) Where an infringer is engaged solely in the business of printing the trade-mark for others and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. (b) Where the infringement complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the remedies of the owner of the right infringed shall be (1) available only against the advertiser and advertising agency, and (2) in the case of any other infringer, confined to an injunction against the future public presentation of such advertising matter: Provided, That these limitations shall apply only to innocent infringers. (c) Injunctive relief shall not be available to the owner of the right infringed in respect of an issue of a newspaper, magazine, or other similar periodical containing infringing matter after the commencement and/or preparation of the engraving and/or composition work either (1) for the issue containing such infringing matter, That was approved, as I understand it, by the advertisers and copyright owners. It seems to me in substance all of the rights of the parties are taken care of. Mr. LANHAM. Of course, we have an analogous situation here with reference to trade-marks. Mr. FENNING. Yes. Two manufacturers, Wheaties and Oaties, were referred to here the other day. Both of those are nationally advertised. If an advertisement is given by both companies to a magazine, say the Saturday Evening Post, the Saturday Evening Post commences to manufacture its magazine. It is notified. Under the bill as it now stands it would then be not an innocent infringer. It has notice. It doesn't know which one is infringing either. It has to take its chances, and all the copies of the magazine can be destroyed. It seems to me that the damage is done not by a publisher who is a mere agent doing whatever comes to him but the damage is done by, and the man liable should be, the man for whom the advertisement is printed, or the advertising agent. Mr. LANHAM. That seems to be true, certainly with reference to reputable publications. I do not know whether there is any other sort or not. Mr. FENNING. This has a limitation, providing only as to innocent infringements. Mr. MARTIN. Isn't the provision relating to copyrights the same as the American Bar Association here with the exception here that in that provision they make provision for publications who begin the work and an injunction is not granted? Mr. FENNING. There is the other limitation, as I understand, the provision of the American Bar Association amendment, if I may use that term, it is possible for the infringer to have all of his plates destroyed, to have his magazines held up and to have everything which he has prepared to do the work with destroyed. Mr. LIDDY. I have a brief report to make, sir. I will make it as brief as possible. Mr. LANHAM. On this section? Mr. LIDDY. NO; generally. Mr. LANHAM. Is there anything further briefly to be said with reference to the point raised by Mr. Rogers? Mr. Rogers, from the standpoint of the newspapers and the recommendation they have made and the suggestion given by Mr. Fenning, what is your reaction to that, in view of the amendment you have suggested? Mr. ROGERS. The only suggestion I have is the burden ought to be on the defendant to show an innocent intention and not on the plaintiff. How it should be phrased is a matter I am not particularly interested in. I can say that it is very seldom there are any suits against a publication in trade-mark matters. There are a great many in copyright cases. Frequently that is the only publication there is. Mr. LANHAM. I think we have a pretty good discussion of the principles there for our consideration. Mr. Rogers had something else he wanted to bring out. Mr. ROGERS. The only thing was, I am sorry I cannot keep referring to the committee print because my notes were not on it. Mr. LANHAM. That is all right. Mr. ROGERS. In H. R. 5461, page 45, that is, in the definition section entitled "Construction and definitions" the bill as it passed the Senate and the bill as it passed the House last year contained the provision that one of the purposes of the act was to protect registered marks used in such commerce, that is, interstate commerce and foreign commerce, from interference by State and Territorial legislation. The American Bar Association recommendation is that that language be deleted. If it had not been in at all, of course, there would be no objection to taking it out. But once it has been in legislation and in bills that have passed both Houses it occurs to me that if it were taken out at this junction an inference might be drawn that would be unfavorable and undesirable because as the committee knows several times we have called your attention to the fact that the States have been legislating on trade-marks and that that legislation is inconsistent with the Federal Constitution. And more than that it is a clear inference that interstate commerce, for example, there is the State of Nevada, I think it was last year, provided by statute that no trade-mark could be owned unless it were registered in that State within 6 months and thereafter it could be registered by anybody and thereupon the persons who were registering became the owner. That passed the houses of the legislature out there but was vetoed. It is a symptom of similar legislation that is being introduced. The result would be in effect a tariff wall around different States interfering with the interstate sale of goods under trade-marks originating outside and at the time that these bills were first proposed it was deemed desirable to have a statement of purpose. One of the purposes of the legislation was to regulate commerce and prevent inconsistent-protect interstate commerce against inconsistent State legislation. Now, as I say, if that provision had never been in, it would not do any harm not to have it. But having been in and having passed both Houses of Congress to strike it out now seems to me that that limits the purposes of the act in a way that might not be desirable. I am just making that as a suggestion. Mr. LANHAM. It would be the abandonment of a declaration heretofore expressed? Mr. ROGERS. I am afraid so. Mr. DERENBERG. I represent the United States Trade-Mark Association. We have considered very carefully this bill, including the American Bar Association amendments and we found that a special committee consisting partly of manufacturers and partly of lawyers approve this bill, including all the amendments except the one suggestion which was discussed by Mr. Rogers. Our lawyers advisory committee, of which Mr. Liddy is chairman and of which Mr. Rogers and Mr. Bailey and others are members, all felt that with one exception this language ought to be deleted. I would like to submit at this point a statement which we prepared in accordance with Mr. Rogers' suggestion that it would be a dangerous inference which may be created at this late time if this language would be deleted. Mr. LANHAM. Yes; that will be inserted in the record. Mr. DERENBERG. When this memorandum was prepared we had no knowledge of section 29, the deposit section. Our approval of the bill and of the amendments does not include section 29. Mr. LANHAM. That is understood generally, I think, from the former discussion. Mr. DERENBERG. The following is the memorandum submitted to the House Committee on Patents, subcommittee on trade-marks, by the United States Trade-Mark Association in support of H. R. 5461. The United States Trade-Mark Association was organized in 1878 and incorporated in 1887 as a nonprofit-making membership corporation under the laws of the State of New York. It is the oldest association of its kind in this country and the only one whose entire purpose and aim is the protection of trade-mark rights. As shown in the attached roster, several hundred national manufacturers and trade-mark owners are regular members of the association, while many leading patent and trade-mark attorneys are associate members. Foremost among the activities of the United States Trade-Mark Association have always been its efforts to bring about a Federal trade-mark statute which would afford the registrant thereunder and the public the strongest possible protections attainable under our constitutional system. It has become more and more recognized during the last 20 years that our present Trade-Mark Acts are inadequate. In order to obtain a truly representative expression of opinion from its entire membership, the United States Trade-Mark Association late in 1939 formed a special committee, constituted partly of manufacturers and partly of lawyers, to study the Lanham bill. The association's lawyer's advisory committee, as well as special committees of other national trade groups and bar associations, also made a comprehensive study of the bill. H. R. 5461, now before this committee, represents, with a few minor changes, the result of the combined efforts of these groups. Since its adoption, however, the trade-mark committee of the American Bar Association has studied the bill and upon its recommendation the American Bar Association approved at its recent meeting in Indianapolis several proposed amendments to the bill, particularly to sections 15 and 32 thereof. The American Bar Association amendments were referred to the association's lawyers' advisory committee, which, after careful study, recommended to the board of directors that the American Bar Association amendments be endorsed and supported, with the one exception noted hereinafter under "IV." The board of directors of the United States Trade-Mark Association has approved the recommendation of the lawyers' advisory committee. IV Section 45 of H. R. 5461 declares it to be the purpose of the act, inter alia, "to protect registered marks used in interstate commerce from interference by State or territorial legislation." The American Bar Association recommends the elimination of this declaration of policy. It is respectfully submitted that the above-quoted sentence should be retained in the act. It is our belief that by now striking this statement, a dangerous inference might be created to the effect that the belated deletion of this language would indicate an intention on the part of Congress to permit the various States to interfere with nationally registered trade-marks in any way which is not expressly prohibited by other sections of the act. This interpretation might, for example, permit the taxing of such trade-marks by the States or the imposition of other burdens and conditions on the use of such registered marks. This would be contrary to the fundamental purpose of the bill and would also lose sight of the fundamental principle of constitutional law that concurrent jurisdiction over commerce between the Federal Government and the States exists only to the extent that such jurisdiction is not exclusively appropriated and exercised by the Federal Government. It seems to be entirely proper, therefore, that the intention of Congress to exclude the State governments from any interference with the use of registered marks in interstate commerce should be unequivocally declared in the act. V H. R. 5461 having received most careful study by the United States Trade-Mark Association as well as by many other leading trade groups and business concerns, it is our firm conviction that this bill, if enacted into law, would constitute a decisive step forward in the protection of trade-mark owners and consumers in this country. The United States Trade-Mark Association,' therefore, desires to go on record as recommending for enactment into law H. R. 5461 and, with the exception noted, the amendments thereto proposed by the American Bar Association. Respectfully submitted. WALTER J. DERENBERG, THE UNITED STATES TRADE-MARK ASSOCIATION, Counsel, Secretary, Lawyers' Advisory Committee. Mr. MARTIN. The principal argument, I believe, which is made in support of keeping in the statute the language to protect registered marks used in such commerce from interference by State or Territorial legislation seems to be the possibility that a wrong inference might be drawn by eliminating that language at this time. I feel confident that any such inference can be negatived by the positive assertion on my part as knowing the work which was done by the American Bar Association committee and section on this statute that there was no intention by eliminating this provision of in any way permitting such an inference to spring up. Mr. LANHAM. No; but the mere fact that it had been deleted and without any legislative declaration with reference to it, would not the inference be pretty strong? Mr. MARTIN. I think, Mr. Chairman and members of the committee, if I explain why it was deleted and positively assert there was no intention in deleting it; that it was because legislatures are not prohibited from passing acts which interfere with commerce, if I make it clear there was no such intention I do not see how any wrong inference can be drawn. The reasons for taking this particular clause out of this section was because it was thought that it was wholly unnecessary. That is, in the first place, it was wholly unnecessary. The sentence which immediately precedes it is this. Mr. LANHAM. Where is that in the committee print? Mr. MARTIN. Page 46. It follows the word "commerce" in line 13. Of course, it is not there, this clause we are talking about. Mr. LANHAM. Yes. 1 Roster pamphlet in committee files. Mr. MARTIN. But it follows in the previous bill, in bill 5461, it follows the first clause and after the word "commerce" in line 13. I call your attention particularly to this first clause: The intent of this Act is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce. Not only does this clause distinctly say that the intent of the act is to regulate commerce within the control of Congress right in the clause but then in the definition of commerce it is even more positive as to what is intended to be taken in in the definition of commerce on page 43, line 6. The word "commerce" means all commerce which may lawfully be regulated by Congress. In view of that language there can be no question but that the intent of this act is to regulate trade-marks insofar as Congress has the power to do so. Now, to add this second sentence to protect registered marks used in such commerce from interference by State and Territorial legislation does not add a thing because the intent shows Congress has intended to exercise all the power it has. Mr. LANHAM. It could not be any more than surplusage. Mr. MARTIN. That is what I wanted to point out. It is surplusage. And not only that, but it seems to me a State legislature might very well question this. I think if I were in a State legislature and I was confronted with this I would immediately say, "There is a challenge to my power, the power of this legislature. I think we ought to be doing something about it because we may be sleeping on our rights." In other words, it would be an incentive to the State legislature to take some action. Mr. LANHAM. Would it, Mr. Martin? In view of the declaration. that this applies to those things exclusively within the control of Congress? That would not limit the State from doing what it can do that was not within the jurisdiction of Congress, would it? Mr. MARTIN. No; but it is a challenge to the State. It calls to their attention here it is a challenge to them, it seems to me. I make that point, and there is one other point I want to make. Mr. LANHAM. Just a minute there. I do not recall that in our former hearings and consideration of bills including the provisions suggested by Mr. Rogers we had any strenuous objections to it. Does anyone here recall? Mr. ROGERS. There was none. Mr. MARTIN. It was removed in the recommendations for amendments of the American Bar Association which were made to H. R. 102 in the February 1941 meeting. Mr. FENNING. That was the American Bar Association meeting. Mr. MARTIN. That was just before H. R. 102 was introduced. I have one other point. I am frank to say this is not a vital point at all. It just seemed to me as a matter of fact the insertion of this clause is not exact, in my opinion it is hardly accurate because the |