TITLE XII-REPEAL OF PREVIOUS ACTS

SEC. 47. (a) This Act shall be in force and take effect one year from its enactment, but except as otherwise herein specifically provided shall not affect any suit, proceeding, or appeal then pending. All Acts and parts of Acts inconsistent herewith are hereby repealed, effective one year from the enactment hereof, including the following, namely: The Act of Congress approved March 3, 1881, entitled "An Act to authorize the registration of trade marks and protest the same"; the Act approved August 5, 1882, entitled "An Act relating to the registration of trade marks"; the Act of February 20, 1905 (U. S. C., title 15, secs. 81 to 109, inclusive), entitled "An Act to authorize the registration of trade marks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same," and the amendments thereto by the Acts of May 4, 1906 (U. S. C., title 15, secs. 131 and 132; 34 Stat. 169), March 2, 1907 (34 Stat. 1251, 1252), February 18, 1909 (35 Stat. 627, 628), February 18, 1911 (36 Stat. 918), March 3, 1911 (33 Stat. 1167), January 8, 1913 (37 Stat. 649), June 7, 1924 (43 Stat. 647), March 4, 1925 (43 Stat. 12€8, 1269), April 11, 1930 (46 Stat. 155) June 10, 1933 (Public, Numbered 586, Seventy-fifth Congress, ch. 332, third session); the Act of March 19, 1920 (U. S. C., title 15, secs. 121 to 128, inclusive), entitled "An Act to give effect to certain provisions of the convention for the protection of trade marks and commercial names made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes"; and the amendments thereto, including Act June 10, 1938 (Public, Numbered 586, Seventyfifth Congress, ch. 332, third session); and section 526 of the Tariff Act of 1930 (U. S. C., title 19, sec. 1526), provided that this repeal shall not affect the validity of registrations granted or applied for under said Acts prior to the effective date of this Act, or rights or remedies thereunder except as provided in sections 8, 12, 14, 15, and 48 of this Act.

(b) Registrations now existing under the Act of March 3, 1881, or the Act of February 20, 1905, shall continue in full force and effect for the unexpired term thereof and may be renewed under the provisions of section 9 of this Act. Such registrations and the renewals thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act to the same extent and with the same force and effect as though registered on the principal register established by this Act except as limited in sections 8, 12, 14, and 15 of this Act. Marks registered under the "ten-year proviso" of section 5 of the Act of February 20, 1905, as amended, shall be deemed to have become distinctive of the registrant's goods in commerce under paragraph (f) of section 2 of this Act and may be renewed under section 9 hereof as marks coming within said paragraph.

Registrations now existing under the Act of March 19, 1920, shall expire six months after the effective date of this Act, or twenty years from the dates of their registrations, whichever date is later. Such registrations shall be subject to and entitled to the benefits of the provisions of this Act relating to marks registered on the supplemental register established by this Act, and may not be renewed unless renewal is required to support foreign registrations. In that event renewal may be effected on the supplemental register under the provisions of section 9 of this Act.

Marks registered under previous Acts may, if eligible, also be registered under this Act.

SEC. 48. (a) All applications for registrations pending in the Office of the Commissioner at the effective date of this Act may be amended, if practicable, to bring them under the provisions of this Act. The prosecution of such applica tions so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act. If such amendments are not made, the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent and for this purpose only, notwithstanding the foregoing general repeal thereof.

(b) In any case in which an appeal is pending before the United States Court of Customs and Patent Appeals or any United States Circuit Court of Appeals or the United States Court of Appeals of the District of Columbia or the United States Supreme Court at the effective date of this Act, the court, if it be of the opinion that the provisions of this Act are applicable to the subject matter of the appeal, may apply such provision or may remand the case to the Commissioner or to the district court for the taking of additional evidence or a new trial or for reconsideration of the decision on the record as made, as the appellate court may deem proper.

SEC. 49. Section 4 of the Act of January 5, 1905 (U. S. C., title 36, sec. 4), as amended, entitled "An Act to incorporate the National Red Cross", and section 7 of the Act of June 15, 1916 (U. S. C., title 36, sec. 27), entitled "An Act to incorporate the Boy Scouts of America, and for other púrposes", and the Act of June 20, 1936 (U. S. C., title 22, sec. 248), entitled "An Act to prohibit the commercial use of the coat of arms of the Swiss Confederation", are not repealed or affected by this Act.

SEC. 50. Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith prior to the passage of this Act.

SEC. 51. If any provision of this Act or the application of such provision to any person or circumstance is held invalid, the remainder of the Act and the application of such provision to other persons or circumstances shall not be affected thereby.

Mr. KRAMER (continuing). Now I think Mr. Jennings Bailey is here and wants to make a statement with respect to the bill. STATEMENT OF JENNINGS BAILEY, JR., CHAIRMAN, COMMITTEE ON LEGISLATION, SECTION OF PATENT, TRADE-MARK AND COPYRIGHT LAW, AMERICAN BAR ASSOCIATION, WASHINGTON, D. C. Mr. BAILEY. Mr. Chairman, I would like permission of the committee to introduce into the record the committee print dated November 4, 1941.. This print represents a modification of H. R. 5461, with certain changes, and with the most of those changes it has been approved in its present language by the American Bar Association through the House of Delegates, acting on the recommendation of the Patent Section.

The only two parts of the bill of which that is not true are section 29 on page 24, which carries out a recommendation of the American Bar Association contained in a report of the Patent Section which was approved by the House of Delegates at the midwinter meeting in March 1941, and relating to the deposit of marks for such purposes in the Patent Office. The second is on page 46, in lines 3 to 5, which is merely a clarification to cover with certainty some marks which are registered under the amendments to the present trade-mark acts.

I do not want to speak at this time, Mr. Chairman, about the merits of it; I merely wanted to get it into the record for future discussion. That is all I have to say.

Mr. FENNING. Mr. Chairman, may I ask a question?

Mr. KRAMER. Yes.

Mr. FENNING. A bill of this sort has been pending for 20 years or so. It has been amended more or less every 15 minutes during that time. Is the committee now going to consider that bill introduced by Mr. Lanham, or is it going to consider the committee reprint, or to consider something which is amended?

Mr. KRAMER. I might say to the gentleman I am going to leave that to the committee and Mr. Lanham, after we hear the testimony. I would not want to commit myself to this committee print.

I have discussed this with Mr. Lanham, as I knew of some changes that were made, but I think he did not consider them material to any great extent, except they may be in the way of clarification of the bill. What the final analysis of it would be I think I will leave with the subcommittee, in connection with whatever the testimony of the witnesses will bring out and suggestions that have been made by the American Bar Association. I believe that is true, is it not?

Mr. BAILEY. Yes.

Mr. FENNING. What I am trying to find out is, when we speak before the committee, shall we direct ourselves to this committee reprint? We have to have something to consider.

Mr. KRAMER. There are some things to be considered there. There are some modifications which the American Bar Association has made, which I think the committee will recognize. I am speaking only for myself now; I do not know what the rest of the members of the committee might do on it; but we want to get this matter before the House and do it expeditiously, and I think it is Mr. Lanham's intention to do that.

Mr. FENNING. All I am trying to find out is this, if I may try to express myself again: Shall I, if I appear before the committee, for instance, consider this committee reprint or consider the bill as originally introduced?

Mr. KRAMER. I might say to the gentleman, again, I cannot tell him what he shall do. If I were the presiding judge in the trial of a case and he appeared before me as an attorney, I would answer him "You try the case as you think you know best how to try it." I think the gentleman [Mr. Fenning] is able to debate this bill, judging from my experience with him, or to agree with the amendments we have set out in the committee print, H. R. 102, or to suggest changes as to such amendments.

Mr. FENNING. If you will excuse my analogy, the judge would insist that I confine my attention to the bill as I filed it, or the bill as amended, and he would not let me argue on both. That is what I want to know-which one to direct our attention to.

Mr. KRAMER. Suppose you ask Mr. Lanham. I have designated him as chairman of the subcommittee because he has lived with it and knows the situation quite well. I would not want to commit myself as to what he shall do, because I think he is perfectly capable of answering that for himself. Pardon me for not giving you any more direct answer.

I understand the next witness who wants to appear is Mr. Harry Brostoff.

STATEMENT OF HARRY BROSTOFF, GENERAL COUNSEL, GRAPHIC ARTS ASSOCIATION OF ILLINOIS; ALSO REPRESENTING SOUTHERN MASTER PRINTERS ASSOCIATION, CHICAGO, ILL.

Mr. BROSTOFF. Mr. Chairman and gentlemen of the committee, I represent the Graphic Arts Association of Illinois, which is the association of printers for the State of Illinois. I also represent the Southern Master Printers Association, who have duly authorized me to speak for them in this regard.

I am going to direct my remarks merely to those sections of the bill under consideration, and particularly to H. R. 5461 and to the committee print, so far as I have been able to look into the committee print at first glance this morning, which affect the printing industry. I refer particularly to section 32 (1) under title VI, "Remedies," and to clause (c) under paragraph (1) of section 32, which reads as follows:

Any person who shall, in commerce * * (c) reproduce, counterfeit, copy, or colorably imitate any such mark and apply such reproduction, counterfeit,

copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale in commerce of such goods or services with actual notice of the registrant's claim of ownership of such mark and with knowledge that such reproduction, counterfeit, copy, or colorable imitation is intended to be used without the consent of the registrant, shall be liable to a civil action by the registrant for any or all of the remedies hereinafter provided.

The effect of that section is to place the printer in a rather anomalous position. It would place him in practically the same position as an employer who is confronted with a jurisdictional labor dispute. He does not wish to take sides in the controversy, yet his operation is stopped.

Mr. FENNING. May I break in there for just a minute. The matter which the gentleman has read does not appear in the committee reprint, as I read it.

Mr. KRAMER. No. I followed him in H. R. 5461, and it is the same exactly in that bill.

Mr. FENNING. There have been amendments, have there?

Mr. KRAMER. No; it is verbatim as he read it in H. R. 5461, title VI, section 32.

Mr. FENNING. It is not as he read it in the committee reprint? Mr. KRAMER. I do not know what is in there; I followed him in H. R. 5461.

Mr. BROSTOFF. So that the record is clear, I read from H. R. 5461. Mr. FENNING. It does not contain the American Bar Association's amendments.

Mr. KRAMER. I did not follow that. I think that is in the committee print, if I have it right. What page is that?

Mr. BROSTOFF. It is on page 28 of the committee print.
Mr. KRAMER. There is a little different language there.

Mr. BROSTOFF. I believe I can refer to the committee print when I get through with my reference to H. R. 5461.

A similar situation is involved with a printer under the provisions that I have read, in this way: It is not only possible but probable that, were that section enacted into law as it reads, the following situation would develop. The owners of trade-marks would immediately serve notice upon printers in general of their ownership of the marks. The printer would then have to make up a rather voluminous file of claims of ownership of marks and every time he received an order to print a catalog, or a publication, or an advertising campaign, it would be incumbent upon him to go into that voluminous file and attempt to ascertain whether any of the marks, in connection with which he has received a claim of ownership, in any way infringed upon the marks in the publication, the advertising material, or anything else which he may be printing.

Mr. KRAMER. That is not the language of the bill. It says "if he does it with knowledge." Now, he could not do it with knowledge unless someone brought it to his attention.

Mr. BROSTOFF. That is correct, but he will have it called to his attention. We will assume he has received an actual notice of the registrant's claim of ownership, which means he then has knowledge. But of what has he knowledge? If that which he is printing is actually an infringement, then having received a notice of claim of ownership, he would be presumed to have had knowledge, because he had received

notice that someone else was claiming the right to the use of that mark,

Now it is not necessary, as I understand it, for a trade-mark to be identical in order to constitute an infringement; therefore, it would be incumbent on the printer to act as a judge and a jury in something which he had no part in, in determining whether a particular mark, of which he has received notice, is an infringement; or, rather, the reverse-whether the mark he is going to print is an infringement of a mark in connection with which he has received a notice of ownership. Now, we can take it for granted that every dispute or every claim of infringement is not justified; so there is always a subject for dispute. In some cases the claimant is right; in some cases the claimant is wrong. Yet, under the provisions of this bill and the damages to which the printer would subject himself if he proceeds where there is any question of doubt that the claim of ownership of a mark, of which he has received notice, would actually amount to an infringement should be proceed, he is placed in the position of doing one of two things-either gambling that the mark is not an infringement and subject himself to the damages which an infringer is subjected to if the mark is an infringement, or playing safe and telling his customer he cannot print the particular material because of the likelihood of an infringement. If he does not print, he loses the profit on the job and, if he does print, he subjects himself to damages for possible infringement. Also, if he does not print, in addition to the possible loss of profits, he subjects himself to a lawsuit for breach of contract. So that the printer is definitely between the devil and the deep sea. He does not know which way to jump under the provisions, as the section is now written. Now, we have no quarrel with the owners of trade-marks obtaining protection, but that protection should be such that it does not interfere with the rights of innocent parties who have nothing to do with the adoption of the mark and who take no part in the marketing of the product, and who innocently print, and who only innocently print, advertising material in connection with it.

It is our desire, therefore, that the section be rewritten or amended so as to eliminate any liability on the part of a printer except in those cases where he is a party to a conspiracy, if you please, where he is one of the moving parties in the adoption of the mark which is an infringement upon a mark which belongs to someone else.

Now I have seen for the first time this morning-and apparently I could not have seen it before this morning in any event-the committee print of the bill. On referring to section 33 (1) we find a similarity between clause (b) and clause (c) of section 32 which I read, paragraph 1, as contained in H. R. 5461. Subparagraph (b), however, while apparently attempting to eliminate the objection which I have made, does not do so. The clause reads as follows:

* (b) reproduce, counterfeit, copy,

Any person who shall, in commerce or colorably imitate any such mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale in commerce of such goods or services, shall be liable to a civil action by the regis trant for any or all of the remedies hereinafter provided, except that under subsection (b) hereof the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive purchasers.