Your dispatch has received careful consideration, and I shall now endeavor to make the subject clear as the Department understands it. So far as concerns "copyright," and the statement that the Japanese Government proposes to join the International Convention at Berne bearing upon that subject, I may observe that the act of March 3, 1891, authorizes the President, when he is satisfied that any foreign state permits to citizens of the United States the benefit of copyright on substantially the same basis as its own citizens, to issue a proclamation declaring the benefits of our copyright laws are extended to the citizens or subjects of such foreign state. This question has been formally presented to you in a circular instruction of May 7, 1891, which you have no doubt communicated to the Japanese Government, and in case Japan is in a position to give the necessary assurance, under her laws that our citizens enjoy within Japanese jurisdiction equal benefits with her own subjects, in the matter of copyright, I shall be glad to receive it and to recommend that the President issue his proclamation pursuant to our statute. But we have no such law so far as concerns trade-marks and patents, and must look elsewhere for our authority. In connection with this subject, I direct your attention to the volume of Foreign Relations, 1895 (pp. 759–765), in regard to reciprocity in trade-marks with Greece. The position of the Department is there clearly stated. It will be seen that it was unable to accept the declaration signed by your colleague at Athens, and the minister for foreign affairs, on July 9, 1894, in order to determine in a more explicit manner the text of the treaty of commerce and navigation concluded at London, between the United States and Greece of December 10-22, 1837, in all that relates to trade-marks, industrial designs, and patterns. The Department's examination of that treaty failed to satisfy it that it was susceptible of the construction the declaration placed upon it. It was accordingly thought that it amended and enlarged the treaty, and in that event necessarily required the President's ratification by and with the advice and consent of the Senate. Mr. Alexander was therefore instructed to conclude a formal convention. That proposition is still under consideration at Athens. Article IX of our treaty with Japan of March 31, 1854, contains, it is presumed, the most-favored-nation clause to which you refer. It reads as follows: It is agreed that if at any future day the Government of Japan shall grant to any other nation or nations privileges and advantages which are not herein granted to the United States and to the citizens thereof, that these same privileges and advantages shall be granted likewise to the United States and to citizens thereof, without any consultation or delay. By the treaty of July 29, 1858, such of the provisions of the treaty of 1854 as conflict with those of the former are revoked by Article XII thereof. (See treaty vol., 1776-1887, p. 1256, Art. VI.) The quoted provision would not seem to be of that class, liowever. But without discussing that feature of the case, I may remark that, in the Department's judgment, the provision of the treaty of 1854, to which you refer, does not mean if Japan shall grant privileges to Germany in consideration of similar privileges granted by the latter to the former, the same privileges shall be granted gratuitously to the United States. The clause" that these same privileges and advantages shall be granted likewise to the United States and to the citizens thereof, without any consultation or delay," only refers, in my opinion, to privileges granted gratuitously to a third power and not to privileges granted in consideration of concessions made by another government. A covenant to give privileges granted to the "most favored nation" only refers to gratuitous privileges, and does not cover privileges granted on the condition of a reciprocal advantage. (Mr. Livingston, Secretary of State, to President Jackson, January 6, 1832. Wharton's International Law Digest, sec. 134, p. 39, Vol. II.) You will find this subject of the "most-favored-nation" treatment discussed in Mr. Frelinghuysen's instruction to Mr. Bingham, No. 827, of June 11, 1884, touching treaty revision in Japan. (See Wharton's Digest, sec. 68, p. 507, Vol. I.) It states, among other things, that the English contention has hitherto been under the most-favored-nation clause of the treaties, that it is absolute, and that even when Japan may bargain with any power to give it a favor for an equivalent the like favor must be granted to England. The Japanese contention is the reverse of this, being that if a favor for a specific condition be stipulated with any one nation, no other may enjoy the favor except upon identical or equivalent conditions. "The theory on which this Government views the question is akin to that of Japan," observes Mr. Frelinghuysen, who then proceeds to cite a pertinent example and to fully discuss the whole subject. This theory was further exemplified and given practical application under the commercial arrangements concluded with foreign powers pursuant to section 3 of the tariff act of 1890. It may possibly be, as you conjectured, that American citizens are "subject to the same terms and conditions," entitled to the same privileges and protection in regard to trade marks and patents that the new Japanese German treaty secures to German subjects in Japan, but the Department is compelled to think it at least doubtful. But even supposing your view to be correct, it is not perceived how it could be declared that the conditions exist except by a treaty, convention, or law pursuant to the act of Congress of March 3, 1881 (Stat. L., vol. 21, p. 502). That law protects trade-marks owned by persons "located in any foreign country which by treaty, convention, or law * affords similar privileges to citizens of the United States." In the absence of either one of the expressed conditions, Japanese subjects can not register their trade marks in this country, and consequently we can not claim corresponding privileges in Japan. Now Article XVI of the treaty of commerce and navigation concluded with that Empire November 22, 1894, says: The citizens or subjects of each of the high contracting parties shall enjoy in the territories of the other the same protection as native citizens or subjects in regard to patents, trade-marks, and designs upon the fulfillment of the formalities prescribed by law. When this treaty goes into effect on July 17, 1899, the matter can be simply and effectively adjusted. One of the conditions imposed by our statute will then have been fulfilled and due cognizance can be taken thereof. It is possible that a formal declaration, reciting the provisions of the above treaty, after submission to the Senate and proclamation by the President, by and with the advice and consent of that body, might meet the case. But as this declaration could not become operative in advance of the treaty's taking effect, it is perceived that such an arrangement would serve no practical purpose. Hence, the only safe way is to conclude a formal convention to that end or wait until July 17, 1899, when the treaty of November 22, 1894, will come into existence. I am, etc., RICHARD OLNEY. Mr. Dun to Mr. Olney. [Telegram.] TOKYO, November 13, 1896. Ratifications will be exchanged of the treaty between Germany and Japan on the 18th instant, on which date seventeenth article of the treaty is to take effect. (See my dispatch No. 410.) I am informed officially Government of Japan is willing to put into operation simultaneously sixteenth article of the new treaty with the United States. Japanese Government suggests that Article XVIII of that treaty, as far as it relates to patent and trade-mark laws of Japan, be brought into operation at the same time; but if this is objectionable to the Government of the United States, they will expect courts of the United States in Japan to enforce those laws. Is it necessary to conclude formal trade-marks convention? If so, will you authorize me to negotiate on one or the other proposals? DUN. Mr. Olney to Mr. Dun. [Telegram.] DEPARTMENT OF STATE, Your wire 13th instant received. Negotiate trade-marks convention, putting in force Article XVI of new treaty. Same to be enforced by United States courts in Japan. Mr. Dun to Mr. Olney. OLNEY. No. 426.] LEGATION OF THE UNITED STATES, Tokyo, Japan, November 14, 1896. (Received Dec. 5.) SIR: I have the honor to inclose herewith a copy of a note, dated the 12th instant, from Count Okuma, His Imperial Japanese Majesty's minister of foreign affairs, in which I am informed that the ratifications of the treaty recently concluded between Japan and Germany will be exchanged in Berlin on the 18th instant, and that the article of that treaty providing for reciprocal national treatment in the matter of protection of industrial property shall come into operation at the same time as such exchange is effected. As you will observe, Count Okuma says in his note that, in view of the friendly and conciliatory spirit in which the United States Government met the proposals of his Government looking to the revision of the existing treaties between the respective countries, his Government is especially desirous of avoiding every thing having the appearance of a desire on their part to discriminate against the citizens of the United States in the matter of the protection of industrial property, and that, therefore, his Government will be happy to consult entirely the wishes of the Government of the United States with reference to bringing into operation Article XVI of the new treaty between the United States and Japan at any time after the exchange of the ratifications of the new treaty between Japan and Germany has been effected. If the proposal of the Japanese Government to bring into immediate operation Article XVI of our treaty with Japan proves acceptable to the United States, the minister of foreign affairs suggests, in view of the justice of the proposition, that those who are entitled to the benefits of a law should rest under obligations to obey its provisions; that those stipulations of Article XVIII of the new treaty, so far as questions relating to the protection of industrial property under the laws of Japan are concerned, shall be brought into operation simultaneously with Article XVI. If, however, this suggestion shall not be acceptable to the United States, Count Okuma expresses the belief that the United States will be prepared to undertake that the industrial property laws of Japan shall, during the time the new treaty remains in abeyance, be enforced by the United States courts in Japan. This proposal of the Japanese Government is, in my opinion, of so much importance to citizens of the United States that I deemed it necessary to telegraph to you on the 13th instant the substance of the Count's note, and in order that our countrymen might at the earliest time possible be placed on an equal footing with the peoples of other countries in the enjoyment of protection of their industrial property in Japan I suggested that I be empowered to conclude a convention with Japan to that end. Since my dispatch No. 410, of date September 14 last, was written I have received the Foreign Relations, Part II, 1895, and have read the correspondence between the Department and Mr. Alexander, our minister at Athens, upon the subject of trade-marks, etc., and conclude from the ruling announced in Mr. Gresham's instruction to Mr. Alexander, No. 43, of February 21, 1895, confirmed by your instruction No. 75, of November 9, 1896, that a formal convention will be necessary to bring Article XVI of our new treaty with Japan into operation. I am informed by Baron von Gutschmid, the German minister at this court, that no definite understanding or arrangement has been reached between his Government and that of Japan in regard to the enforced observance by German subjects of Japan's industrial property laws. The German courts will continue to exercise jurisdiction over German subjects in cases of infringement of those laws as well as in all other matters, and it seems that the penalties to be imposed for the violation of those laws will be entirely within the province of the German courts to determine. If a convention for the protection of industrial property be concluded between the United States and Japan, I am of the opinion, for many reasons which will doubtless occur to you, that jurisdiction over American citizens in all questions pertaining thereto should remain in the United States courts in Japan until the new treaty comes into force and extraterritoriality is abolished. At the same time I concur in Count Okuma's proposition "that those who are entitled to the benefits of a law should themselves rest under obligations to obey its provisions," and therefore it seems to me but just that the United States should undertake through her courts to enforce in every particular the industrial property laws of Japan so long as her citizens enjoying the benefits of those laws are subject only to our jurisdiction. Awaiting your instructions in this matter, I have, etc., FR 96- -28 EDWIN DUN. [Inclosure in No. 426.-Translation.] Count Okuma to Mr. Dun. DEPARTMENT OF FOREIGN AFFAIRS, Tokyo, November 12, 1896. SIR: The treaty of commerce and navigation recently concluded between Japan and Germany, the ratifications of which are to be exchanged at Berlin on the 18th instant, provides that the article reciprocally guaranteeing national treatment in the matter of the protection of industrial property shall come into operation at the same time as such exchange is effected. The stipulation bearing upon the same subject which appears in the treaty of the 22d day of the eleventh month of the twenty-seventh year of Meiji between Japan and the United States, is, like all the other provisions of that contract, as your excellency is well aware, expressly eventual. In view, however, of the friendly and conciliatory spirit in which the United States met the proposals of His Imperial Majesty's Government looking to the revision of the existing treaties. between our respective countries, the Imperial Government are especially anxious to avoid everything having the appearance of a desire on their part to discriminate against the United States citizens in the matter of the protection of industrial property. Accordingly I have the honor to acquaint your excellency that the Imperial Government will be happy to consult entirely the wishes of the United States Government with reference to bringing into operation Article XVI of the new treaty between Japan and the United States at any time after the exchange of the ratifications of the new treaty between Japan and Germany has been effected. If this proposal proves acceptable to your excellency's Government I trust that the United States Government, fully recognizing the justice of the propo sition that those who are entitled to the benefits of a law should themselves rest under obligation to obey its provisions, will agree that those stipulations of Article XVIII of the new treaty which provide for the ultimate restoration of jurisdiction to Japan so far as questions relating to the protection of industrial property under the laws of Japan are concerned be brought into force contemporaneously with Article XVI. In the event, however, the United States Government should find insuperable objections to the foregoing suggestion, I do not permit myself to doubt but that they will be prepared to undertake that the industrial property laws of Japan shall, during the time the new treaty remains in abeyance, be enforced by the United States courts in Japan. Placing myself entirely at your excellency's disposal in the matter of concerting the necessary understanding on the subject in case the proposal of the Imperial Government finds favor with the United States, I beg to renew, etc. COUNT OKUMA SHIGENOBU, No. 433.] Mr. Dun to Mr. Olney. LEGATION OF THE UNITED STATES, Tokyo, Japan, December 12, 1896. (Received Jan. 4, 1897.) SIR: Since my dispatch No. 429, of date November 23 last, in regard to bringing into immediate force Article XVI of our new treaty with |