author: Mr. Justice Black

text:
    SEARS, ROEBUCK & CO. v. STIFFEL COMPANY.
    No. 108.
    Argued January 16, 1964.
    Decided March 9, 1964.

      Will Freeman argued the cause for petitioner. With him on the briefs were Frank H. Marks, D. D. Allegretti and George B. Newitt.

      Warren C. Horton argued the cause for respondent. With him on the brief was Max R. Kraus.

      Solicitor General Cox, Assistant Attorney General Orrick, Daniel M. Friedman and Lionel Kestenbaum filed a brief for the United States, as amicus curiae, urging reversal.
   Mr. Justice Black

delivered the opinion of the Court.

The question in this case is whether a State’s unfair competition law can, consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright. The respondent, Stiffel Company, secured design and mechanical patents on a “pole lamp” — a vertical tube having lamp fixtures along the outside, the tube being made so that it will stand upright between the floor and ceiling of a room. Pole lamps proved a decided commercial success, and soon after Stiffel brought them on the market Sears, Roebuck & Company put on the market a substantially identical lamp, which it sold more cheaply, Sears’ retail price being about the same as Stiffel’s wholesale price. Stiffel then brought this action against Sears in the United States District Court for the Northern District of Illinois, claiming in its first count that by copying its design Sears had infringed Stiffel’s patents and in its second count that by selling copies of Stiffel’s lamp Sears had caused confusion in the trade as to the source of the lamps and had thereby engaged in unfair competition under Illinois law. There was evidence that identifying tags were not attached to the Sears lamps although labels appeared on the cartons in which they were delivered to customers, that customers had asked Stiffel whether its lamps differed from Sears’, and that in two cases customers who had bought Stiffel lamps had complained to Stiffel on learning that Sears was selling substantially identical lamps at a much lower price.

The District Court, after holding the patents invalid for want of invention, went on to find as a fact that Sears’ lamp was “a substantially exact copy” of Stiffel’s and that the two lamps were so much alike, both in appearance and in functional details, “that confusion between them is likely, and some confusion has already occurred.” On these findings the court held Sears guilty of unfair competition, enjoined Sears “from unfairly competing with [Stiffel] by selling or attempting to sell pole lamps identical to or confusingly similar to” Stiffel’s lamp, and ordered an accounting to fix profits and damages resulting from Sears’ “unfair competition.”

The Court of Appeals affirmed. 313 F. 2d 115. That court held that, to make out a case of unfair competition under Illinois law, there was no need to show that Sears had been “palming off” its lamps as Stiffel lamps; Stiffel had only to prove that there was a “likelihood of confusion as to the source of the products” — that the two articles were .sufficiently identical that customers could not tell who had made a particular one. Impressed by the “remarkable sameness of appearance” of the lamps, the Court of Appeals upheld the trial court’s findings of likelihood of confusion and some actual confusion, findings which the appellate court construed to mean confusion “as to the source of the lamps.” The Court of Appeals thought this enough under Illinois law to sustain the trial court’s holding of unfair competition, and thus held Sears liable under Illinois law for doing no more than copying and marketing an unpatented article. We granted certiorari to consider whether this use of a State’s law of unfair competition is compatible with the federal patent law. 374 U. S. 826.

Before the Constitution was adopted, some States had granted patents either by special act or by general statute, but when the Constitution was adopted provision for a federal patent law was made one of the enumerated powers of Congress because, as Madison put it in The Federalist No. 43, the States “cannot separately make effectual provision” for either patents or copyrights. That constitutional provision is Art. I, § 8, cl. .8, which empowers Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Pursuant to this constitutional authority, Congress in 1790 enacted the first federal patent and copyright law, 1 Stat. 109, and ever since that time has fixed the conditions upon which patents and copyrights shall be granted, see 17 U. S. C. §§ 1-216; 35 U. S. C. §§ 1-293. These laws, like other laws of the United States enacted pursuant to constitutional authority, are the supreme law of the land. See Sperry v. Florida, 373 U. S. 379 (1963). When state law touches upon the area of these federal statutes, it is “familiar doctrine” that the federal policy “may not be set at naught, or its benefits denied” by the state law. Sola Elec. Co. v. Jefferson Elec. Co., 317 U. S. 173, 176 (1942). This is true, of course, even if the state law is enacted in the exercise of otherwise undoubted state power.

The grant of a patent is the grant of a statutory monopoly; indeed, the grant of patents in England was an explicit exception to the statute of James I prohibiting monopolies. Patents are not given as favors, as was the case of monopolies given by the Tudor monarchs, see The Case of Monopolies (Darcy v. Allein), 11 Co. Rep. 84 b., 77 Eng. Rep. 1260 (K. B. 1602), but are meant to encourage invention by rewarding the inventor with the right, limited to a term of years fixed by the patent, to exclude others from the use of his invention. During that' period of time no one may make, use, or sell the patented product without the patentee’s authority. 35 U. S. C. § 271. But in rewarding useful invention, the “rights and welfare of the community must be fairly dealt with and effectually guarded.” Kendall v. Winsor, 21 How. 322, 329 (1859). To that end the prerequisites to obtaining a patent are strictly observed, and when the patent has issued the limitations on its exercise are equally strictly enforced. To begin with, a genuine “invention” or “discovery” must be demonstrated “lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art.” Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 92 (1941); see Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152-153 (1950); Atlantic Works v. Brady, 107 U. S. 192,199-200 (1883). Once the patent issues, it is strictly construed, United States v. Masonite Corp., 316 U. S. 265, 280 (1942), it cannot be used to secure any monopoly beyond that contained in the patent, Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488, 492 (1942), the pat-entee’s control over the product when it leaves his hands is sharply limited, see United States v. Univis Lens Co., 316 U. S. 241, 250-252 (1942), and the patent monopoly may not be used in disregard of the antitrust laws, see International Business Machines Corp. v. United States, 298 U. S. 131 (1936); United Shoe Machinery Corp. v. United States, 258 U. S. 451, 463-464 (1922). Finally, and especially relevant here, when the patent expires the monopoly created by it expires, too, and the right to make the article — including the right to make it in precisely the shape it carried when patented — passes to the public. Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 120-122 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 185 (1896).

Thus the patent system is one in which uniform federal standards are carefully used to promote invention while at the same time preserving free competition. Obviously a State could not, consistently with the Supremacy Clause of the Constitution, extend the life of a patent beyond its expiration date or give a patent on an article which lacked the level of invention required for federal patents. To do either would run counter to the policy of Congress of granting patents only to true inventions, and then only for a limited time. Just as a State cannot encroach upon the federal patent laws directly, it cannot, under some other law, such as that forbidding unfair competition, give protection of a kind that clashes with the objectives of the federal patent laws.

In the present case the “pole lamp” sold by Stiffel has been held not to be entitled to the protection of either a mechanical or a design patent. An unpatentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so. What Sears did was to copy Stiffens design and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent laws. That Stiffel originated the pole lamp and made it popular is immaterial. “Sharing in the goodwill of an article unprotected by patent or trade-mark is the exercise of a right possessed by all — and in the free exercise of which the consuming public is deeply interested.” Kellogg Co. v. National Biscuit Co., supra, 305 U. S., at 122. To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. The result would be that while federal law grants only 14 or 17 years’ protection to genuine inventions, see 35 U. S. C. §§ 154, 173, States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards. This would be too great an encroachment on the federal patent system to be tolerated.

Sears has been held liable here for unfair competition because of a finding of likelihood of confusion based only on the fact .that Sears’ lamp was copied from Stiffel’s unpatented lamp and that consequently the two looked exactly alike. Of course there could be “confusion” as to who had manufactured these nearly identical articles. But mere inability of the public to tell two identical articles apart is not enough to support an injunction against copying or an award of damages for copying that which the federal patent laws permit to be copied. Doubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods. But because of the federal patent laws a State may not, when the article is unpatented and uncopyrighted, prohibit the copying of the article itself or award damages for such copying. Cf. G. Ricordi & Co. v. Haendler, 194 F. 2d 914, 916 (C. A. 2d Cir. 1952). The judgment below did both and in so doing gave Stiffel the equivalent of a patent monopoly on its unpatented lamp. That was error, and Sears is entitled to a judgment in its favor.

Reversed.

[For concurring opinion of Mr. Justice Harlan, see post, p. 239.]

       No review is sought here of the ruling affirming the District Court’s holding that the patent is invalid.

       313 F. 2d, at 118 and nn. 6,7. At least one Illinois case has held in an exhaustive opinion that unfair competition under the law of Illinois is not proved unless the defendant is shown to have “palmed off” the article which he sells-as that of another seller; the court there said that “[t]he courts in this State do not treat the ‘palming off’ doctrine as merely the designation of a typical class of cases of unfair competition, but they announce it as the rule of law itself — the test by which it is determined whether a given state of facts constitutes unfair competition as a matter of law. . . . The ‘palming off’ rule is expressed in a positive, concrete form which will not admit of ‘broadening’ or ‘widening’ by any proper judicial process.” Stevens-Davis Co. v. Mather & Co., 230 Ill. App. 45, 65-66 (1923). In spite of this the Court of Appeals in its opinions both in this case and in Day-Brite Lighting, Inc., v. Compco Corp., 311 F. 2d 26, rev’d, post, p. 234, relied upon one of its previous decisions in a trade-name case, Independent Nail & Packing Co. v. Stronghold Screw Products, 205 F. 2d 921 (C. A. 7th Cir. 1953), which concluded that as to use of trade names the Stevens-Davis rule had been overruled by two subsequent Illinois decisions. Those two cases, however, discussed only misleading,use of trade names, not copying of articles of trade. One prohibited the use of a name so similar to that of another seller as to deceive or -confuse customers, even though the defendant company did not sell the same products as the plaintiff and so in one sense could not be said to have palmed off its goods as those of a competitor, since the plaintiff was not a competitor. Lady Esther, Ltd., v. Lady Esther Corset Shoppe, Inc., 317 Ill. App. 451, 46 N. E. 2d 165 (1943). The other Illinois case on which the Court of Appeals relied was a mandamus action which held that under an Illinois statute a corporation was properly denied registration in the State when its name was “deceptively similar” to that of a corporation already registered. Investors Syndicate of America, Inc., v. Hughes, 378 Ill. 413, 38 N. E. 2d 754 (1941). The Court of Appeals, by holding that because Illinois forbids misleading use of trade names it also forbids as unfair competition the mere copying of an article of trade without any palming off, thus appears to have extended greatly the scope of the Illinois law of unfair competition beyond the limits indicated in the Illinois cases and beyond any previous decisions of the Seventh Circuit itself. Because of our disposition of these cases we need not decide whether it was correct in doing so.

       See I Walker, Patents (Deller ed. 1937), § 7.

       The Federalist (Cooke ed. 1961) 288.

       Patent rights exist only by virtue of statute. Wheaton v. Peters, 8 Pet. 591, 658 (1834).

       The Statute of Monopolies, 21 Jac. I, c. 3 (1623), declared all monopolies “contrary to the Laws of this Realm” and “utterly void and of none Effect.” Section VI, however, excepted patents of 14 years to “the true and first Inventor and Inventors” of “new Manufactures” so long as they were “not contrary to the Law, nor mischievous to the State, by raising Prices of Commodities at home, or Hurt of Trade, or generally inconvenient . . . .” Much American patent law derives from English patent law. See Pennock v. Dialogue, 2 Pet. 1, 18 (1829).

       The purpose of Congress to have national uniformity in patent and copyright laws can be inferred from such statutes as that which vests exclusive jurisdiction to hear patent and copyright cases in federal courts, 28 U. S. C. § 1338 (a), and that section of the Copyright Act which expressly saves state protection of unpublished writings but does not include published writings, 17 U. S. C. § 2.

       U. S. Const., Art. VI.

       It seems apparent that Illinois has not seen fit to impose liability on sellers who do not label their goods. Neither the discussions in the opinions below nor the briefs before us cite any Illinois statute or decision requiring labeling.


source: Caselaw Access Project

author: Mr. Justice Black Mr. Justice Harlan,

license: Public Domain

text:
    COMPCO CORPORATION v. DAY-BRITE LIGHTING, INC.
    No. 106.
    Argued January 16, 1964.
    Decided March 9, 1964.

      Jerome F. Fallon argued the cause for petitioner. With him on the briefs were Horace Dawson and John H. O. Clarke.

      Owen J. Ooms argued the cause for respondent. With him on the brief was Roy A. Lieder.

      Solicitor General Cox, Assistant Attorney General Orrick, Daniel M. Friedman and Lionel Kestenbaum filed a brief for the United States, as amicus curiae, urging reversal.
   Mr. Justice Black

delivered the opinion of the Court.

As in Sears, Roebuck & Co. v. Stiffel Co., ante, p. 225, the question here is whether the use of a state unfair competition law to give relief against the copying of an unpatented industrial design conflicts with the federal patent laws. Both Compeo and Day-Brite are manufacturers of fluorescent lighting fixtures of a kind widely used in offices and stores. Day-Brite in 1955 secured from the Patent Office a design patent on a reflector having cross-ribs claimed to give both strength and attractiveness to the fixture. Day-Brite also sought, but was refused, a mechanical patent on the same device. After Day-Brite had begun selling its fixture, Compco’s predecessor began making and selling fixtures very similar to Day-Brite’s. This action was then brought by Day-Brite. One count alleged that Compco had infringed Day-Brite’s design patent; a second count charged that the public and the trade had come to associate this particular design with Day-Brite, that Compco had copied Day-Brite’s distinctive design so as to confuse and deceive purchasers into thinking Compco’s fixtures were actually Day-Brite’s, and that by doing this Compco had unfairly competed with Day-Brite. The complaint prayed for both an accounting and an injunction.

The District Court held the design patent invalid; but as to the second count, while the court did not find that Compco had engaged in any deceptive or fraudulent practices, it did hold that Compco had been guilty of unfair competition under Illinois law. The court found that the overall appearance of Compco’s fixture was “the same, to the eye of the ordinary observer, as the overall appearance” of Day-Brite’s reflector, which embodied the design of the invalidated patent; that the appearance of Day-Brite’s design had “the capacity to identify [Day-Brite] in the trade and does in fact so identify [it] to the trade”; that the concurrent sale of the two products was “likely to cause confusion in the trade”; and that “[a]ctual confusion has occurred.” On these findings the court adjudged Compco guilty of unfair competition in the sale of its fixtures, ordered Compco to account to Day-Brite for damages, and enjoined Compco “from unfairly competing with plaintiff by the sale or attempted sale of reflectors identical to, or confusingly similar to” those made by Day-Brite. The Court of Appeals held there was substantial evidence in the record to support the District Court’s finding of likely confusion and that this finding was sufficient to support a holding of unfair competition under Illinois law. 311 F. 2d 26. Although the District Court had not made such a finding, the appellate court observed that “several choices of ribbing were apparently available to meet the functional needs of the product,” yet Compco “chose precisely the same design used by the plaintiff and followed it so closely as to make confusion likely.” 311 F. 2d, at 30. A design which identifies its maker to the trade, the Court of Appeals held, is a “protectable” right under Illinois law, even though the design is unpatentable. We granted certiorari. 374 U. S. 825.

To support its findings of likelihood of confusion and actual confusion, the trial court was able to refer to only one circumstance in the record. A plant manager who had installed some of Compco’s fixtures later asked Day-Brite to service the fixtures, thinking they had been made by Day-Brite. There was no testimony given by a purchaser or by anyone else that any customer had ever been misled, deceived, or “confused,” that is, that anyone had ever bought a Compco fixture thinking it was a Day-Brite fixture. All the record shows, as to the one instance cited by the trial court, is that both Compco and Day-Brite fixtures had been installed in the same plant, that three years later some repairs were needed, and that the manager viewing the Compco fixtures — hung at least 15 feet above the floor and arranged end to end in a continuous line so that identifying marks were hidden— thought they were Day-Brite fixtures and asked Day-Brite to service them. Not only is this incident suggestive only of confusion after a purchase had been made, but also there is considerable evidence of the care taken by Compco to prevent customer confusion, including clearly labeling both the fixtures and the containers in which they were shipped and not selling through manufacturers’ representatives who handled competing lines.

Notwithstanding the thinness of the evidence to support findings of likely and actual confusion among purchasers, we do not find it necessary in this case to determine whether there is “clear error” in these findings. They, like those in Sears, Roebuck & Co. v. Stiffel Co., supra, were based wholly on the fact that selling an article which is an exact copy of another unpatented article is likely to produce and did in this case produce confusion as to the source of the article. Even accepting the findings, we hold that the order for an accounting for damages and the injunction are in conflict with the federal patent laws. Today we have held in Sears, Roebuck & Co. v. Stiffel Co., supra, that when an article is unprotected by a patent or a copyright, state law may not forbid others to copy that article. To forbid copying would interfere with the federal policy, found in Art. I, § 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain. Here Day-Brite’s fixture has been held not to be entitled to a design or mechanical patent. Under the federal patent laws it is, therefore, in the public domain and can be copied in every detail by whoever pleases. It is true that the trial court found that the configuration of Day-Brite’s fixture identified Day-Brite to the trade because the arrangement of the ribbing had, like a trademark, acquired a “secondary meaning” by which that particular design was associated with Day-Brite. But if the design is not entitled to a design patent or other federal statutory protection, then it can be copied at will.

As we have said in Sears, while the federal patent laws prevent a State from prohibiting the copying and selling of unpatented articles, they do not stand in the way of state law, statutory or decisional, which requires those who make and sell copies to take precautions to identify their products as their own. A State of course has power to impose liability upon those who, knowing that the public is relying upon an original manufacturer’s reputation for quality and integrity, deceive the public by palming off their copies as the original. That an article copied from an unpatented article could be made in some other way, that the design is “nonfunctional” and not essential to the use of either article, that the configuration of the article copied may have a “secondary meaning” which identifies the maker to the trade, or that there may be “confusion” among purchasers as to which article is which or as to who is the maker, may be relevant evidence in applying a State’s law requiring such precautions as labeling; however, and regardless of the copier’s motives, neither these facts nor any others can furnish a basis for imposing liability for or prohibiting the actual acts of copying and selling. Cf. Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 120 (1938). And of course a State cannot hold a copier accountable in damages for failure to label or otherwise to identify his goods unless his failure is in violation of valid state statutory or decisional law requiring the copier to label or take other precautions to prevent confusion of customers as to the source of the goods.

Since the judgment below forbids the sale of a copy of an unpatented article and orders an accounting for damages for such copying, it cannot stand.

Reversed.

Mr. Justice Harlan,

concurring in the result.

In one respect I would give the States more leeway in unfair competition “copying” cases than the Court’s opinions would allow. If copying is found, other than by an inference arising from the mere act of copying, to have been undertaken with the dominant purpose and effect of palming off one’s goods as those of another or of confusing customers as to the source of such goods, I see no reason why the State may not impose reasonable restrictions on the future “copying” itself. Vindication of the paramount federal interest at stake does not require a State to tolerate such specifically oriented predatory business practices. Apart from this, I am in accord with the opinions of the Court, and concur in both judgments since neither case presents the point on which I find myself in disagreement.

       The sales of which Day-Brite complained in this action had actually been made by the Mitchell Lighting Company. However, by the time the complaint was filed, Mitchell had been acquired by Compco, which was therefore the defendant in the action and is the petitioner here. For simplicity we shall throughout the opinion refer only to Compco even though the transactions for which Compco was sought to be held liable were those of the predecessor company, Mitchell.

       The Court of Appeals also affirmed the holding that the design patent was invalid. No review of this ruling is sought here.

       As stated in Sears, Roebuck & Co. v. Stiffel Co., ante, at p. 228, n. 2, we do not here decide whether the Court of Appeals was correct in its statement of Illinois law.

       The only testimony about this incident was given by a sales representative of Day-Brite, who said that the plant manager had climbed up on a forklift truck to look at the fixtures. The manager was not called as a witness.

       As we pointed out in Sears, Roebuck & Co. v. Stiffel Co., ante, p. 232, n. 9, there is no showing that Illinois has any such law.

      [This opinion applies also to No. 108, Sears, Roebuck & Co. v. Stiffel Co., ante, p. 225.]


author: Mr. Justice Clark Mr. Justice Harlan,

text:
    PLATT, CHIEF JUDGE, U. S. DISTRICT COURT, v. MINNESOTA MINING & MANUFACTURING CO.
    No. 113.
    Argued January 9, 1964.
    Decided March 9, 1964.

      Daniel M. Friedman argued the cause for petitioner. With him on the brief were Solicitor General Cox, Assistant Attorney General Orrick and Lionel Kestenbaum.

      John T. Chadwell argued the cause for respondent. With him on the brief were Glenn W. McGee, Jean Engstrom, Allan J. Reniche and John L. Connolly.

   Mr. Justice Clark

delivered the opinion of the Court.

Rule 21 (b) of the Federal Rules of Criminal Procedure provides that where it appears that an offense was committed in more than one district or division and the court “is satisfied that in the interest of justice the proceeding should be transferred” to another such district or division than the one wherein it is filed, the court shall, upon motion, transfer the case. The respondent filed such a motion to transfer this antitrust prosecution from the Eastern District of Illinois to the District of Minnesota. After a hearing, the trial judge denied this motion on the ground that the factors of convenience, expense and early trial, together with the fact that it “would be more difficult [for the Government] to get a fair and impartial jury in the Minnesota District,” convinced him that “the interest of justice” would not be promoted by a transfer. The respondent then petitioned the Court of Appeals to issue a writ of mandamus directing the transfer. The Court of Appeals found that the trial judge had treated the factor of a fair and impartial trial as the “most important item” in his decision and that this was not an appropriate criterion. It concluded that in addition to “the essential elements of convenience, expense and early trial, constituting ‘interest of justice’ in a civil case,” a criminal case was “impressed with the fundamental historical right of a defendant to be prosecuted in its own environment or district . ...” Upon reviewing the record, the Court of Appeals substituted its own findings for those of the trial judge and ordered the case transferred. 314 F. 2d 369. Chief Judge Hastings dissented. We granted the petition for certiorari in view of the importance of the questions to the prosecution of multi-venue cases. 374 U. S. 825. We believe that the Court of Appeals erred in ordering the transfer and therefore vacate its judgment and remand the case for further consideration by the District Court.

I.

A grand jury sitting at Danville, in the United States District Court for the Eastern District of Illinois, returned an indictment charging the respondent with violating §§ 1 and 2 of the Sherman Act. The indictment charged an attempt to monopolize and a conspiracy to restrain and monopolize interstate and foreign commerce in pressure-sensitive tape, magnetic recording media and aluminum presensitized lithographic plates. The offense was alleged to have been committed in part in the Eastern District of Illinois, which includes both Danville and East St. Louis. It is agreed that the indictment could have been returned in the District of Minnesota as well as several other districts.

The Court of Appeals found, in contradiction to the finding of the District Court, that a trial in the Eastern District of Illinois would result in unjustifiable increased expenses to the respondent of “at least $100,000, great inconvenience of witnesses, serious disruption of business and interference of contact between the [respondent’s] executives and its trial attorneys . ...” It also found that respondent had no office, plant, or other facility in the Eastern District and that there was less congestion in the docket of the Minnesota District than in the Eastern District of Illinois. The court concluded that this was a “demonstration by proof or admission of the essential elements of convenience, expense and early trial, constituting 'interest of justice’ in a civil case,” which, augmented by the additional consideration that this was a criminal action, compelled the granting of the motion to transfer.

In awarding the mandamus the Court of Appeals placed particular weight on the trial judge’s finding that it “would be more difficult to get a fair and impartial jury in the Minnesota District than in the Eastern District of Illinois.” The Court of Appeals stated that this finding, if true (which it doubted), “would not justify a refusal to make a transfer otherwise proper under rule 21 (b) . . .” and concluded that “it would be an unsound and dangerous innovation in our federal court system for a judge in any district to appraise or even speculate as to the efficacy of the operations of a federal court of concurrent jurisdiction in another district. It follows that no order in any way based upon such reasoning can stand, even under the guise of an exercise of discretion.” The Court of Appeals, by way of footnote, then characterized the consideration of this factor by the trial judge as “the most important item” despite the trial judge’s statement in his answer to the rule to show cause that it “was but one of a number of factors . . . which led respondent to his conclusion.”

II.

The trial judge in his memorandum decision listed a number of items as pertinent in the determination of whether the case should be transferred to Minnesota “in the interest of justice” as required by Rule 21 (b). As Chief Judge Hastings pointed out in his dissent, these “factors were (1) location of corporate defendant; (2) location of possible witnesses; (3) location of events likely to be in issue; (4) location of documents and records likely to be involved; (5) disruption of defendant’s business unless the case is transferred; (6) expense to the parties; (7) location of counsel; (8) relative accessibility of place of trial; (9) docket condition of each district or division involved; and (10) any other special elements which might affect the transfer.”

It appears that both parties and the Court of Appeals agree that the first nine factors enumerated were appropriate. As we have noted, the Court of Appeals struck the fair and impartial jury finding as not being a proper factor and the Government does not challenge that action here. Nor has the Government challenged the use of the extraordinary writ of mandamus as an appropriate means to review the refusal to transfer. We shall, therefore, not consider those matters here, assuming, without deciding, their validity for the purposes of this case. This leaves before us the question of whether the Court of Appeals erred in considering the motion to transfer de novo on the record made in the District Court and ordering transfer to the District of Minnesota.

III.

We cannot say, as did the Court of Appeals, that “the most important item” in the trial judge’s mind when he ruled against transfer was the finding of difficulty in the selection of a fair and impartial jury in Minnesota. The weight that Judge Platt gave this factor is a matter so peculiarly within his own knowledge that it seems more appropriate to have him resolve it. He has represented in his answer that this “was but one of a number of factors.” The District Court’s use of an inappropriate factor did not empower the Court of Appeals to order the transfer. The function of the Court of Appeals in this case was to determine the appropriate criteria and then leave their application to the trial judge on remand. Extraordinary-writs are “reserved for really extraordinary causes,” Ex parte Fahey, 332 U. S. 258, 260 (1947), and then only “to confine an inferior court to a lawful exercise of its prescribed jurisdiction or to compel it to exercise its authority when it is its duty to do so.” Roche v. Evaporated Milk Assn., 319 U. S. 21, 26 (1943). Here, however, the Court of Appeals undertook a de novo examination of the record and itself exercised the discretionary function which the rule commits to the trial judge. This the court should not have done since the writ cannot be used “to actually control the decision of the trial court.” Bankers Life & Casualty Co. v. Holland, 346 U. S. 379, 383 (1953).

IV.

Since the trial court must reconsider the motion, effective judicial administration requires that we comment upon the erroneous holding of the Court of Appeals that criminal defendants have a constitutionally based right to a trial in their home districts. Art. Ill, § 2, of the Constitution provides that “The Trial of all Crimes . . . shall be held in the State where the said Crimes shall have been committed . . . .” The Sixth Amendment carries a like command. As we said in United States v. Cores, 356 U. S. 405, 407 (1958): “The Constitution makes it clear that determination of proper venue in a criminal case requires determination of where the crime was committed. . . . The provision for trial in the vicinity of the crime is a safeguard against the unfairness and hardship involved when an accused is prosecuted in a remote place.” The fact that Minnesota is the main office or “home” of the respondent has no independent significance in determining whether transfer to that district would be “in the interest of justice,” although it may be considered with reference to such factors as the convenience of records, officers, personnel and counsel.

The judgment of the Court of Appeals is therefore reversed and the cause is remanded to that court with instructions to vacate the judgment of the District Court and to remand the case for reconsideration of the motion for transfer, without reference to the ability of the United States to receive a fair and impartial trial in Minnesota.

It is so ordered.

Mr. Justice Harlan,

concurring.

I join the Court’s opinion with the following brief comments.

First, for myself I wish to make explicit what is indeed implicit in the Court’s opinion, namely, that the Court of Appeals was entirely correct in holding that the District Court’s speculation that the Government might not be able to obtain an impartial jury in the Minnesota District was wholly out of bounds.

Second, while the Court of Appeals’ outright reversal of the District Court understandably reflects its view that the other factors making for a change of venue, when stripped of the impermissible “impartial jury” consideration, are indeed strong, such action cannot well be regarded as other than a de novo determination of the change of venue motion on the part of the Court of Appeals. Such a course inescapably contravenes accepted principles governing the exercise of appellate jurisdiction.

       The All Writs Act grants to the federal courts the power to issue “all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.” 28 U. S. C. §1651 (a).

       314 F. 2d 369, 371, n. 1.

        Id,., at 375.

         Id., at 375, n. 3.

        Id., at 375.

         Id., at 373.

        Id., at 375.

         Id., at 371, n. 1.

        Id., at 376-377.


author: Mr. Justice Harlan

text:
    LOCAL UNION NO. 721, UNITED PACKINGHOUSE, FOOD & ALLIED WORKERS, AFL-CIO, v. NEEDHAM PACKING CO., doing business as SIOUX CITY DRESSED BEEF.
    No. 102.
    Argued February 20, 1964.
    Decided March 9, 1964.

      Richard F. Watt argued the cause for petitioner. With him on the briefs were Eugene Cotton and Harry H. Smith.

      Alfred L. Scanlan argued the cause for respondent. With him on the brief were James A. Gilker and Jesse E. Marshall.

   Mr. Justice Harlan

delivered the opinion of the Court.

This case, which was brought here from the Supreme Court of Iowa, 374 U. S. 826, presents a problem concerning the relationship between an arbitration clause and a no-strike clause in a collective bargaining agreement.

Although this case comes to us on the pleadings and some disputed questions of fact are still to be resolved, we accept as true the following facts for the purposes of our decision. The petitioner, Local Union No. 721, United Packinghouse, Food and Allied Workers, AFL-CIO, and the respondent, Needham Packing Co., had an agreement which included provisions of both kinds, set out hereafter. On May 11, 1961, Needham discharged Anton Stamoulis, an employee represented by the union. In response, on the same day about 190 other employees left work. During the next few days Needham advised the employees to return to work, stating that if they did not their employment would be regarded as terminated and that the discharge of Stamoulis would be treated under the grievance procedures of the collective bargaining agreement. The employees did not return to work.

On July 5, 1961, the union presented to Needham written grievances on behalf of Stamoulis and the other employees, asserting that they had been “improperly discharged” and requesting their reinstatement with full seniority rights and pay for lost time. By letter dated July 11, 1961, Needham refused to process the grievances. The letter stated that the union and its members had by their conduct “repudiated and terminated the labor agreement” with the company. In addition, Needham stated that it would not have further dealings with the union and did not recognize the union as majority representative of Needham employees.

This suit by the union under § 301 (a) of the Labor Management Relations Act, 29 U. S. C. § 185 (a), to compel arbitration of the two grievances followed. Need-ham alleged as a defense that the union and its members had struck on May 11, 1961, and that this breach of the no-strike clause of the collective bargaining agreement had been and was treated by Needham as having terminated its obligations under the agreement. In addition, Need-ham filed a counterclaim, alleging that it had been damaged in the amount of $150,000 by the union’s breach of the no-strike clause. The union denied such breach. At the close of the pleadings, in accordance with Iowa procedure, Needham moved for a ruling on points of law and a final order denying the union’s petition to compel arbitration. Deciding solely on the basis of matters raised in the pleadings as to which there was no dispute, the trial court ruled in Needham’s favor and issued an order against the union. The union obtained an appeal. The Supreme Court of Iowa affirmed the holding below that “the Union had waived its right to arbitrate the grievances filed by its walkout.” 254 Iowa 882, 887, 119 N. W. 2d 141, 143.

In the present posture of this case, we must answer the question whether acts of the union relieved Needham of its contractual obligation to arbitrate almost entirely on the basis of the agreement itself. We think it plain that, seen from that perspective, the judgment below must be reversed.

The two controlling provisions of the collective bargaining agreement are written in comprehensive terms. The no-strike clause provides:

“It is agreed that during the period of this agreement the employees shall not engage in and the Union shall not call or sanction any slow down, work stoppage or strike . . . .”

The grievance provisions include typical procedures for the resolution of a dispute preliminary to arbitration. They then provide:

“In the event a dispute shall arise between the Company and the Union with reference to the proper interpretation or application of the provisions of this contract and such dispute cannot be settled by mutual agreement of the parties, such dispute shall be referred to a board of arbitration upon the request of the Union.”

It is evident from the above as well as other provisions of the agreement that the grievance procedures were intended largely, if not wholly, for the benefit of the union.

A state court exercising its concurrent jurisdiction over suits under § 301 (a) applies federal substantive law. Charles Dowd Box Co., Inc., v. Courtney, 368 U. S. 502. The law which controls the disposition of this case is stated in Drake Bakeries Inc. v. Local 50, American Bakery & Confectionery Workers International, AFL- CIO, 370 U. S. 254. In that case, the employer had filed an action for damages under § 301 (a), alleging that the union had “instigated and encouraged its members to strike or not to report for work,” in violation of a no-strike clause. Id., at 256. The collective bargaining agreement contained a broad arbitration clause covering “all complaints, disputes or grievances arising between . . . [the parties] involving questions of interpretation or application of any clause or matter covered by this contract or any act or conduct or relation between the parties hereto, directly or indirectly.” Id., at 257.

The employer argued that the promise not to strike was so basic to the collective bargain and breach of the no-strike clause so completely inconsistent with the provision for arbitration that the employer’s duty to arbitrate was excused by the union’s breach. This argument, which is essentially that of Needham here, was rejected on grounds fully applicable to this case. Although the Court relied in part on the employer’s apparent intention not to terminate the contract altogether, more central to its conclusion was the view that there was no “inflexible rule rigidly linking no-strike and arbitration clauses of every collective bargaining contract in every situation.” Id., at 261. (Footnote omitted.) We said:

“. . . [U]nder this contract, by agreeing to arbitrate all claims without excluding the case where the union struck over an arbitrable matter, the parties have negatived any intention to condition the duty to arbitrate upon the absence of strikes. They have thus cut the ground from under the argument that an alleged strike, automatically and regardless of the circumstances, is such a breach or repudiation of the arbitration clause by the union that the company is excused from arbitrating, upon theories of waiver, estoppel, or otherwise. Arbitration provisions, which themselves have not been repudiated, are meant to survive breaches of contract, in many contexts, even total breach; and in determining whether one party has so repudiated his promise to arbitrate that the other party is excused the circumstances of the claimed repudiation are critically important. In this case the union denies having repudiated in any respect its promise to arbitrate, denies that there was a strike, denies that the employees were bound to work on January 2 and asserts that it was the company itself which ignored the adjustment and arbitration provisions by scheduling holiday work.” Id., at 262-263. (Footnotes omitted.)

Continuance of the duty to arbitrate is, if anything, clearer here than it was in Drake Bakeries, where one of the issues was whether an alleged strike was within the intended scope of the arbitration clause. There is no question in this case that the union’s claim of wrongful discharge is one which Needham agreed to arbitrate. Nothing in the agreement indicates an intention to except from Needham’s agreement to arbitrate disputes concerning the “interpretation or application” of the agreement any dispute which involves or follows an alleged breach of the no-strike clause. That the no-strike clause does not itself carry such an implication is the holding of Drake Bakeries.

The fact that the collective bargaining agreement does not require Needham to submit its claim to arbitration, as the employer was required to do in Drake Bakeries, and indeed appears to confine the grievance procedures to grievances of the union, does not indicate a different result. Needham’s claim is the subject of a counterclaim in the Iowa courts; nothing we have said here precludes it from prosecuting that claim and recovering damages. That Needham asserts by way of defense to the union’s action to compel arbitration the same alleged breach of the no-strike clause which is the subject of the counterclaim does not convert the union’s grievance into Need-ham’s different one.

Nor do we believe that this case can be distinguished from Drake Bakeries on the ground that that case involved only a “one-day strike,” id., at 265. Whether a fundamental and long-lasting change in the relationship of the parties prior to the demand for arbitration would be a circumstance which, alone or among others, would release an employer from his promise to arbitrate we need not decide, since the undeveloped record before us reveals no such circumstance. Compare Drake Bakeries, supra, at 265. The passage of time resulting from Needham’s refusal to arbitrate cannot, of course, be a basis for releasing it from its duty to arbitrate.

Needham’s allegations by way of defense and counterclaim that the union breached the no-strike clause, supported by such facts as were undisputed on the pleadings, did not release Needham from its duty to arbitrate the union’s claim that employees had been wrongfully discharged. On that basis, we reverse and remand to the Iowa Supreme Court for further proceedings.

It is so ordered.

       Rule 105 of the Iowa Rules of Civil Procedure provides:
      “The court may in its discretion, and must on application of either party, made after issues joined and before trial, separately hear and determine any point of law raised in any pleading which goes to the whole or any material part of the case. It shall enter an appropriate final order before trial of the remaining issues, adjudicating the point so determined, which shall not be questioned on the trial of any part of the case of which it does not dispose. If such ruling does not dispose of the whole case, it shall be deemed interlocutory for purposes of appeal.”

       Although Rule 105 provides that a final order entered under it shall be “deemed interlocutory for purposes of appeal,” the order which is entered is a “final order . . . adjudicating the point so determined, which shall not be questioned on the trial of any part of the case of which it does not dispose.” See supra, note 1. Accordingly, our jurisdiction was properly invoked.

       For example, the agreement provides that grievances must be presented within 14 days “of the occurrence giving rise to such grievance” or within 14 days “of the time the Union has knowledge, or should have had knowledge of such grievance . . . .”

       In effect, the union’s grievance involved the “interpretation or application” of § 8 (a) of the collective bargaining agreement, which provided that Needham could discharge employees “for just cause.”

       Here, as in Atkinson v. Sinclair Refining Co., 370 U. S. 238, we find it unnecessary to decide what effect, if any, factual or legal determinations of an arbitrator would have on a related action in the courts. See id., at 245, note 5.

        Atkinson v. Sinclair Refining Co., 370 U. S. 238, in which the provision for arbitration was similarly limited to employee grievances, is of no relevance here, since the question in that case was whether the employer’s action for breach of the no-strike clause should be submitted to arbitration.