271 F. 511 | D. Mass. | 1921
The Lenox Company of New Jersey rests its case upon a design patent, numbered 50,064.
The application was filed October 16, 1916, and the design was patented December 19, 1916, under an express term limiting it to 3% years.
The designer was Frank G. Holmes, and whatever rights there are under the patent are now owned or controlled by the Lenox Company.
In my view, this case leaves only a single question for me to decide, as will be explained later on.
The case has reference to a patented design for a plate or similar article. The design is particularly ornamental, and was the result of large expense in the line of artistic work, with the result of a rare
With the design, as it was brought out, were combined with the marginal scrollings peculiarly attractive shades and colorings, interspersed with the figures of birds in brilliant and varied plumage, artistically poised within shapely panels, in accordance with the design pattern. Yet the Lenox bases its claims more upon the design pattern than upon colorings and shades, yet claiming that the combination of colors and shades is an element to be considered; and this is so, I think, because it is a market production which strongly appeals to the artistic eye.
The design was one of admitted merit, yet, after alLit was one which contemplated a combination of colorings and shades to give artistic effect to the figures of the design, some of which were old. The patent, it is to be presumed, was not based altogether, perhaps not at all, upon the colorings and shadings, but rather upon the ornamental combination of figures and shapes and drawings, as shown by the pattérn attached to the pátent itself.
The ornamental combination and design were intended, of course, for the face of the plate.
On the back of the intended article of ware—as brought out for the trade—there is a wreath, inside of which is the letter “L”; under the wreath (if that is the proper characterization of the figure) is the word “Lenox”; underneath that the word “Ming”; and still again, under “Ming,” “Design Patented.”
The scrolls and figures' and words of the original design are in black and white. Some figures of the design combination as patented, and as put upon the market, have been known since the fifteenth century, and the word “Ming” and the Chinese tree, as is supposed, associate themselves with the days of the Ming dynasty.
The design intended for the face of the ware is one of undoubted merit, as has already been said, and is one which was intend-' ed to be superimposed upon the face of a high grade of chinaware, and the product, as brought out, by the Lenox Company, for the trade, was a product resulting from great pains in selecting the quality of ingredients which were, to enter into the ware itself.
It was put upon the market as an article of merit, and in commerce it was something which attracted the eye of trade—especially the eye of women, who, as the evidence shows, were the chief purchasers of high-class chinaware, like that of the Lenox “Ming” in question.
The merit of the decorative Ming production was such that its sales ran up into hundreds of thousands of dollars within a single year.
The chief difficulty with the plaintiff’s case is that the patent expired before the menace of infringement which the Lenox Company now alleges as something injurious to its rights.
There are several defenses, but under the circumstances it seems obvious that the case should.be dealt with as only, in substance, in
Now as to the English product:
It is_ a product of much cheaper material, and of a somewhat less attractive design, though quite like that of the Lenox, yet a design somewhat different, because the tree is one of different lines, the flowers differently placed, with a lower branch and flowers on the left-hand side of the English, an absence in the English of the butterflies which appear in the Lenox, and the birds, though of brilliant plumage and of attractive figures, are quite differently poised, the panels are differently shaped, and the flowers and other figures within the panels are quite different in the English from those in the “Ming” panel, and the shades of the ware, at least to the feminine eye, would differentiate the two.
I have described what is on the back of the Lenox, and the evidence tends to show (and I think it is true) that women, who are the chief purchasers of such ware, with feminine tact, or under the feminine impulse, and perhaps somewhat under the instinct of curiosity, after looking at the front design, as the next step look for the name of the manufacturer, and of the place of the maker, as indicated by what is on the back of the ware.
The evidence also tends to show that women purchasers are quite apt to hold the ware up to the light, to see how it shows up.
I have so far spoken of the design which appears upon the face of the English ware. Now as to the designation on the back of the English:
There is a figure of a crown, or something which at all events looks English, there are the words “Johnson Brothers,” and the word “England,” and on Defendant’s Exhibit B, and perhaps on others, there is the word “Vigo,” all of which are quite different from the words and figures on the Eenox.
Again, on the Lenox, the wreath and the “L” and the words are in black, while on the English the words and figures are in green.
I think the features, which I have described, sufficiently indicate to purchasers of the wares in question what they are getting, especially when it is considered that the inferior English product in the trade holds at prices only something like one-fifth of that of the higher class Lenox product.
The English product in trade demands only something like one-fifth of that of the original Lenox, and I think the figures and colorings, on the back of the English, reasonably and suitably designate the place from whence the product comes. I think this designation was in good faith, and was to the end that the public should not be cheated, and I find that the Jones McDuffee concern, in dealing with the English product and making contracts for shipments, acted in good faith with reference to the question whether the public would, or would not, be deceived.
No rule of law, or of reason, would require the differentiating names and marks of the makers to be placed on the face of chinaware, or of other ware carrying an attractive decorative design. Such a setting would at once mar the beauty of the design, and at once dethrone the purpose of the producer, which, of course, is that of attracting trade through a scheme of combinations appealing to the artistic eye.
The rule of reason only requires the distinctive marks to be placed on the back of the ware, where not only those of artistic tastes, but the average trade as well, would naturally look for the markings, if interested to know. This is where the markings would naturally and reasonably be placed on such ware as that in question, both as to the plaintiff’s and the defendant’s, and where they would naturally be-looked for by members of the public who buy, and where it must be said they would reasonably expect to find them.
Yet we must look further to the relations between the English company and the Jones McDuffee concern, in respect to the English product, and as to the proposed shipments.
It seems that the “Vigo” pattern was brought out, to some extent, by the English company, through its American agency in New York, during the life of the Lenox design; yet I think it was done in good
Thus things occurring during the life of the Lenox design were amicably arranged, and the questions here have reference only to the menace of things done, or proposed to be done, since the expiration of the life of the Lenox design patent.
The Jones, McDuffee & Stratton Company is a corporation which, through the father of the Jones now president of the corporation, succeeded to a business founded by Otis Norcross, and is a concern, as well as that of the Lenox, which stands high in the field of commerce in which they are operating.
A representative of the Jones McDuffee concern (I think Theodore Jones), being in New York for business purposes, was shown by a representative of the English company samples, or tentative sample designs, of the ware which, as was explained, was to be brought out by Johnson Bros., in England. There were explanations as to dissimilitudes in shades, patterns, and quality of ware, and, I think, of differences between that and the Lenox in respect to designs and markings, together with explanations as to the differences in cost.
The English samples indicated a cheaper grade of ware (earthenware, I think, and in some grades that of semi-porcelain), and the designs were in quite close similitude to that of the Ming patent. And the Jones McDuffee Company man, understanding that the Ming patent had expired, and without understanding that he was violating any of the rights of the Lenox Company, and in good faith, made contracts in respect to the wares which were being brought out in England, contracts which contemplated very considerable future shipments of the English ware, which shipments were to be to the Jones, McDuffee & Stratton Company. The Jones McDuffee Company has, in the past, exclusively handled the high-grade “Ming” china in the Boston trade zone, and are still handling it (I believe, and as the evidence shows), with 'laudable commendations as to its high class and character.
But I find that the Jones concern was not, and is not, Sn Irust relations with the Lenox Company. I find that both the Jones Company and the English Company, in respect to the transactions in question, were acting in good faith, so far as their acts concerned the rights of the Lenox Company, and when this litigation was started that shipments were suspended without the Jones McDuffee Company’s pressing the Lenox Company to a hearing upon its petition for a preliminary injunction.
Patent monopoly was intended by the framers, in the primal sense, among other things, to advance science, and to encourage invention
The scheme of the Lenox assembly—the figures, lines, scrolls, and other attractive features—was one which unquestionably resulted in producing an exquisite design, and the purpose of the Lenox Company, in respect to the quality and grade of ware which it brought to trade and commerce, in connection with the design, was laudable. But exclusive control has had its day, according to the express terms of the patent covering the design.
Therefore, if there was no wrongful purpose, the Lenox design, except as to limited qualifications, is open to others; and if the English product, which the Jones Company proposes to use, was suitably marked and designated as English product, so that purchasers should not be led to believe that they are getting the original Lenox “Ming,” when in fact they are getting something else, an article manufactured by some one other than the Lenox, thinking that it was the Lenox.
The circumstances of the hearing show that the parties look upon this case as an important one, and it is gratifying and refreshing to say that counsel and parties have conducted their litigation with fairness and dignity, each side to the other.
If all litigation were to be conducted with' as little “bad blood” as has been shown here, “bad blood” being an expression sometimes used to express heated legal controversy, and if parties and counsel in all cases should exhibit the fine quality of courtesy which has been shown in this Rearing, the difficulties of judges, having for a time the task of deciding cases, would be greatly lessened.
The particular remedy which the plaintiff seeks, after stating its views as to the grounds for it, is a permanent injunction against further shipments or importations to the Jones Company of the English product which have been described.
In view of the rule of law in respect to the rights of the public, after a patent has expired, to which I have referred, and tried to explain, and of the distinctive markings wherein the manufacture, in respect to such art, they would ordinarily be placed, and where in the trade they would be expected to be found, I do not think the English product, under the circumstances, in the hands of the Jones McDuffea Company, can be said unreasonably, or unfairly, if at all, to come into competition, in trade, in regard to the genuine Ming.
Under all the circumstances, and for the reasons given, I find as a fact, and rule as law, that the bill and the petition should be dismissed, and they are dismissed, with costs to the defendant.