240 F. 737 | E.D. Mich. | 1917
In this suit the plaintiff charges three things against the defendant: Infringement of patent No. 852,450, to Plym, of May 7, 1907; infringement of patent No. 860,150, to Plym, of July 16, 1907; and unfair competition.
Defendant denies that it possesses resiliency, contending that, while on heavy pressure, it will yield, and when the heavy pressure is withdrawn it will resume its normal position, yet denies that the possible forces applied to the glass before the breaking point is reached are such that resiliency of the inner member is brought into play. Results of an experiment were brought to my attention and offered in evidence by the defendant, for the purpose of showing that this inner member is not resilient. This experimental test is not persuasive, as it does not correctly represent the conditions existing in practical use.
In determining this question, of course, the court ought to have in mind the weight of the glass, the amount of pressure that is likely to be exerted against it, the bending qualities of the glass, and all of its different characteristics. Glass, while it can be bent, at the same time possesses great strength, and these large panes of glass are heavy, and must, if they are serviceable and durable, resist heavy strains. The resiliency which the patent intends for the inner member is not that kind of resiliency which is very easily yielding, or it would not serve its purpose. The value of the resilient inner member is to hold the glass in its normal position so much of the time as possible, and to only permit it to leave that normal position on heavy pressure, for the purpose of saving it from being broken.
• I have studied by actual experiment of my own the question of whether or not it was resilient. It yields perceptibly upon pressure. In addition to my own judgment upon that subject, I have had in mind the previous case from this court (Kawneer Manufacturing Company v. Toledo Plate & Window Glass Company [D. C.] 232 Fed. 362),
“1. The combination of a channeled front plate, a back plate, a channeled filling strip occupying the channel of the front plate and headed fastening devices extending through the channeled plate and the back plate and having their heads within the channeled filling strip to be covered by the same.
“2. The combination of a channeled front plate provided with lateral flanges, a plate back of the same and provided with resilient wings, a stiffening part engaging the back plate, bolts extending through the channeled front plate, the back plate, and the stiffening part, and a channeled filling strip occupying and closing the channel of the front plate and clamped in position by said bolts." ¥
Defendant, while admitting the validity of this patent, introduced a number of prior patents. The British patent to Shelley, No. 12,036 of 1887, is admitted by defendant’s expert to be the nearest to both plaintiff’s and defendant’s constructions. This does not show a practical construction for store front purposes. This is admitted by defendant’s expert. None of these prior patents show anything which limits either of these claims.
The first claim contains four elements, three of which are admittedly old, and one, the channel filling strip occupying the channel of the front plate, is new. The second contains five elements, four of which are old, and the new one being the Same new element as that in claim 1. Defendant contends that this new element, viz., the channel filling strip, is not found in its constructions, and that therefore neither of these claims was infringed by it.
The completed structures, as they are finally in service in the building, holding the two adjacent edges of adjacent panes of glass at the corner"of a building, or in front of a building, after they are assembled and in place, are identical, except that the bottom part of tire channel front plate of the plaintiff’s structure is absent from the defendant’s structure. Aside from this, in the finished form they are identical in shape, and where .you find one thickness of the metal in one you will find one thickness of the metal in the other; and where you find two thicknesses of the metal in one you will find two thicknesses of the metal in the other. At the point where the head of the bolt exerts its pressure, it is identically the same part of the structure, and at that particular part there are two thicknesses of the metal immediately opposite, between the head and the glass in each structure.
Considering the finished structure, and forgetting for the instant the manner of assembling, it would seem to me that the two structures were identical in every particular, except that the defendant, by removing the bottom part of what the plaintiff calls the channeled- front plate, has impaired to that extent the function which that plate is to perform. I am led somewhat to that conclusion (which seems to> me apparent by looking at the structures and considering the results which they are intended to accomplish) by the fact that the defendant itself, in one of its structures, has arranged a tie across the bottom of this channel at the point where the head of the bolt comes in contact with the sides of the channel in order to prevent spreading of this channel. I would expect it to spread, and in actual use it evidently has on some occasions spread, or the defendant would not have found it necessary or desirable to use the tie or stay across the bottom. If that tie was extended along the entire length, then we would have the identical structures when they were in place and performing service, and then the only possible difference would be one of assembling. So it seems to me that either of the defendant’s' structures, when assembled and in service in the building, is in fact the plaintiff’s structure, except for the impairment that I have mentioned. An infringer
Now, is there enough of the assembling feature in the plaintiff’s patent, ahd is there enough difference in the defendant’s metfiod of assembling, to avoid infringement? I have already reached the conclusion, as stated, that in the finished product I find them the same. If I read either claim 1 or claim 2 of the plaintiff’s patent upon the structure when it is assembled and together, I read it as readily on the defendant’s structure as I do on thé plaintiff’s structure. And in my interpretation of it I am not at all bothered to do that by the fact that the bottom of the so-called channel or front strip of plaintiff’s structure has been removed in the defendant’s structure.
The plaintiff describes his method of assembling — talking about claim 1 — by first putting together the three old elements, and then slipping the channel filling-strip into its place under the heads of the bolts; the back plate and the so-called channeled front plate having first been bolted together. In other -words, the plaintiff assembles those old parts first, and then slips his new part into position under the head of the bolt. In the actual structures made under the patent by plaintiff, the bolts are slid into the filling strip and then inserted directly through the channeled front plate, instead of sliding the filling strip' over the bolt heads, and as thus assembled are delivered to the user.
The defendant', in assembling its structure, first makes into one piece that which corresponds to the channeled front plate and the channel filling strip of the plaintiff’s structure, then slips the head of the bolt into the channel, and then fastens these three elements to the back plate. In other words, as I view it in the combination, it is simply a difference in the order of assembling, and a difference in the part where the last step in the assembling takes place. In the plaintiff’s structure the last step is to put in the channel filling strip, and that completes the last step in the combination of the four elements; while in the defendant’s structure the last step is to add to the other three elements the back plate.
This leads me to the other and only remaining branch of the case —that of unfair competition. As I stated at the outset, it is proven beyond dispute, and in fact is admitted in the case, that the structure of defendant is so similar in appearance to that of the plaintiff that the unskilled,. average, ordinary consumer, the man who ultimately gets the product, finally pays for it, and finally uses it and owns it, would not know the one from the other.
The record shows that the plaintiff had built up a large business in this country in these products. The structures covered by the two patents in suit are closely related to each other in a commercial way. The articles built under the one, and those built under the other, fit into the same structure, they adjoin each other in the structure, and they ought to be and are built in harmony with each other, and they are so sold and used. It is true, as has been urged by counsel, that the officers of the defendant company are men of high standing in this community, and I ought not to do, unnecessarily, any harm to their business, or to them as individuals, by any decision that I might make in this court. It is not for me to pass upon their individual intent in this matter, and I am glad that I am not called upon to do that, because, knowing some of them as I do, I know they would not intend to violate the law, or intentionally do what was wrong in any particular. Yet I find, according to my best judgment, that they have infringed both of these patents, and, as I say, it must be admitted on this record that the product which I find was an infringement of these patents is' so like to that of the plaintiff’s product made under these patents, and upon which plaintiff had built up a business and established a reputation, that it did in fact — whether the officers of defendant company as individuals intended that it should so result or not — deceive the public. It must be admitted that the ordinary layman, who owns a store and needs a new show window, might specify “Kawneer,” receive defendant’s structure, and think he was getting “Kawneer,” and he never would know, unless some one told him, but that he had “Kawneer.”
If one sees a practical and useful article on the market, and then later tries to design and devise something to serve the same purpose for their own manufacture, it is difficult even for them to tell to what extent they have been influenced by the article they have previously seen. So in this case it does not matter whether it is done consciously or unconsciously ; but it is apparent to me that, not only in the elements and the combination of elements, which I hold to infringe, but also as to the dress and appearance of the product, the plaintiffs structure has influenced the dress and appearance of the defendant’s structure. They are so similar in every particular that, even though it was not intentional, I feel that the plaintiff’s structure must have influenced the form, shape, dimensions, and appearance of the defendant’s structure, as well as the construction of elements which I hold infringe.
It is true the defendant placed its name upon each piece that it manufactured. These pieces are of considerable size, and that would not of necessity mean that each piece, when resold, would have the defendant’s name upon it. The name is something that one would not wish to have
The use of this word “Almetal” as a claimed trade-mark, by the defendant, when in fact, it did not have a trade-mark, and would not be able to get a legal valid trade-mark in this name, was in reality a misrepresentation. It is substantially the word which had been prominently displayed by the plaintiff long prior to its use by the defendant — not the exact word. The word that the plaintiff displayed was “All-Metal,” spelling the words correctly, and connecting them with a hyphen; but they are pronounced tire same, they meant the same to every one, they are descriptive, they are not fanciful words, and therefore not subject to registration as a lawful trade-mark; so I am not entertaining the thought that defendant infringed any trade-mark of the plaintiff, but simply considering that along with all of the elements in this case, as one of the “straws” directing the conclusion which I feel forced to reach, that defendant has been guilty of unfair competition. This is a term that the plaintiff was using in connection with its business. It was long ago engaged in tire business of manufacturing an all-metal construction of this kind. This defendant, before or about the time that it engaged in the operation of the business which I am now about to restrain, must have known of the decree of this court (Kawneer Mfg. Co. v. Toledo Plate & Window Glass, Co. [D. C.] 232 Fed. 362) holding the first-mentioned patent in suit valid.
. It is not a pleasant thing to restrain reputable business men from engaging in a business which they have built up, and which is undoubtedly profitable to them, and in a way helpful to the community and to the public. However, there is no question but that, if I am right in my findings of fact and conclusions of law as to these other matters, it is a just law that would restrain, because that business has been built up, as I view it, at the expense of the plaintiff, using things that plaintiff’s
A decree will therefore be entered in favor of the plaintiff for such profits and damages as plaintiff is entitled to under the findings which I have made, and reference will be made to William S. Sayres, Jr., the standing master of this court, to take an accounting as to the damages and profits, and a permanent injunction will issue restraining the defendant from infringing these patents, and from continuing the unfair competition. .