U.S. Supreme Court HURN v. OURSLER, 289 U.S. 238 (1933)

[Page 289 U.S. 238, 248]

should have been dismissed, as was the infringement claim, upon the merits. Since a decree to that effect must follow, upon this record, as a matter of course, no further proceedings in the District Court are necessary. Accordingly the decree will be modified in the respect suggested, and as so modified, will be affirmed.

Two. During the pendency of the suit petitioners amended their bill so as to make its allegations apply to the uncopyrighted version of their play, namely, that the wrongful acts of respondents were in violation of the rights of petitioners and constituted unfair business practices and unfair competition with respect to that version as well as to the original. Since that claim did not rest upon any federal ground and was wholly independent of the claim of copyright infringement, the District Court was clearly right in dismissing it for want of jurisdiction. The bill as amended, although badly drawn, sets forth facts alleged to be in violation of two distinct rights, namely, the right to the protection of the copyrighted play, and the right to the protection of the uncopyrighted play. From these averments two separate and distinct causes of action resulted, one arising under a law of the United States, and the other arising under general law. For reasons that have already been made manifest, the latter is entirely outside the federal jurisdiction and subject to dismissal at any stage of the case. It is hardly necessary to say that a federal court is without the judicial power to entertain a cause of action not within its jurisdiction, merely because that cause of action has mistakenly been joined in the complaint with another which is within its jurisdiction.

Decree modified in accordance with the foregoing opinion, and, as modified, affirmed.

Mr. Justice BRANDEIS and Mr. Justice STONE think the decree should be affirmed without modification. Footnotes

Footnote 1 Some cases seem to hold that, however intimately the claims of unfair competition and infringement are related, the federal court is without power to consider the former. Planten v. Gedney (C.C.A.) 224 F. 382, 386; Recamier Mfg. Co. v. Harriet Hubbard Ayer, Inc. (D.C.) 59 F.(2d) 802, 806. This is what is sometimes spoken of as the 'second circuit rule,' and has been followed in a large number of cases. Other cases have denied jurisdiction on the ground that the two claims constitute separate causes of action, although in some the separateness does not clearly appear. United States Expansion Bolt Co. v. H. G. Kroncke Hardware Co. (C.C.A.) 234 F. 868, 872-875. Compare Moore v. N.Y. Cotton Exchange, , 607, et seq., 46 S.Ct. 367, 45 A.L.R. 1370; Dickinson Tire & Machine Co. v. Dickinson (C.C.A.) 29 F.(2d) 493. In Onondaga Indian Wigwam Co. v. Ka-Noo-No Indian Mfg. Co. (C.C.) 182 F. 832, the rule of the Siler Case, 213 U.S. 175, 29 S.Ct. 451, was definitely applied to a case where the acts of defendant were alleged as constituting an infringement of a patent and also unfair competition. Some courts have taken jurisdiction of unfair competition in infringement suits as an element constituting 'aggravation of damages.' Ludwigs v. Payson Mfg. Co. ( C.C.A.) 206 F. 60, 65; W. F. Burns Co. v. Automatic Recording Safe Co. (C. C.A.) 241 F. 472, 486; Payton v. Ideal Jewelry Mfg. Co. (C.C.A.) 7 F.(2d) 113. Relief has been denied for unfair competition where the patent or trademark has been held valid but not infringed-Sprigg v. Fisher (D.C.) 222 F. 964; Detroit Showcase Co. v. Kawneer Mfg. Co. (C.C.A.) 250 F. 234, 240; Taylor v. Bostick (C.C.A.) 299 F. 232, while the contrary is stated with much force in Vogue Co. v. Vogue Hat Co. (C.C.A.) 12 F.(2d) 991, 992- 995. One case, at least, seems to consider the question of retention of jurisdiction a matter of discretion. Mallinson v. Ryan (D.C.) 242 F. 951, 953.