276 F. 676 | 9th Cir. | 1921
In these cases are involved the validity of two design patents, numbered respectively 51,043 and 51,253, and, if valid, whether infringed by the defendant’s device. The first comprises a front and rear perspective view of plaintiff’s Exhibit 2, in case No. 492, and Exhibit 5, in 544, as designated in the lower court; and the second, a front and side perspective view of plaintiff’s 1 (xhibit 2 in case No. 544. The first of these contains the annular flange as shown in the utility patent No. 1,245,084, produced in case No. 3617, (276 Fed. 682), which is at this time decided, but by separate opinion. Reference is made thereto for a more particular description of the patented device.
“To entitle a party to tlie beneflt of the act, in either case, there must he originality, and the exercise of the inventive faculty. In the one, there must be novelty and utility; in tho other originality and beauty. Mere mechanical skill is insufficient. There must be something akin to genius — an effort of the brain as well as the hand.”
It requires the exercise of inventive faculty equally in a design as in a utility patent to insure validity, and the test of invention is the
“It must exhibit something which appeals to the aesthetic faculty of the observer.” Rose Mfg. Co. v. E. A. Whitehouse Mfg. Co., supra.
Further in comparison, for the purpose of ascertaining and determining the sameness of effect upon the eye of the observer, the viewpoint of the expert is inapplicable. The test is the effect that the design produces visualized by the ordinary observer, “giving such attention as a purchaser usually gives.” Gorham Co. v. White, 14 Wall. 511, 528, 20 L. Ed. 731; Bolte & Weyer Co. v. Knight Light Co., supra.
The dry utility incident to a mechanical patent cannot be made the subject of a design patent. It is that utility which imparts a pleasing effect to the eye and appeals to the aesthetic emotions, to the sense of the beautiful, which is essential to the patentability of design. So that the attempt to patent a mechanical function under cover of a design would lead to a perversion of the purposes of the statute. Rowe v. Blodgett & Clapp Co., 112 Fed. 61, 50 C. C. A. 120; Marvel Co. v. Pearl et al. (C. C.) 114 Fed. 946; Weisgerber v. Clowney (C. C.) 131 Fed. 477.
Plaintiff’s design is not without attractiveness and symmetry, nor altogether devoid of decorative merit. As a piece of furniture, it is attended with a bit of charm and elegance. We have not been advised of anything in the art that in resemblance is its exact prototype. But we are impressed that the defendant’s device does not infringe, and this for the reason that the wide annular flange, and the particular disposition of the heating unit are so characteristic of plaintiff’s device as to differentiate it instantly, even by casual observance, from that of defendant. The test, as we have seen, is the impression made upon the ordinary observer, giving such attention to the object visualized as a purchaser usually gives. This means the exercise of intelligence, with a view to discrimination.
Some testimony has been offered in support of plaintiffs contention that the similarity is so complete as to produce a. sameness of appearance.
Mrs. Rabat! was familiar with the Majestic heater. While passing on the street, she saw a Westinghouse heater. It struck her that it was a Majestic, but she turned back and examined it more closely, and found It to be a Westinghouse. The thing that attracted her attention, and made her doubt that it was a Majestic, was what, she thought to be a change, in the element, alluding to the heating element. So it is apparent that one of the very features that most potently discriminate the one design from the other is what caught her eye and caused her to look more closely. As a purchaser, she would not have been deceived.
Hiller testifies he was shown two heaters of the Westinghouse type, by a man who mistook them for the Majestic, remarking, after somi discussion, “It looks very much like it.” The witness proceeded:
“I showed him Hiere was n slight difference in the element, and one thing and another, but in general appearance they were the same. I presume he purchased them on the strength of that.”
Witness tells of another instance where a person told him he had bought a Westinghouse supposing it to be a Majestic. The testimony is not assuring, for if such purchases had been made under mistake as to identity, the testimony of the purchasers themselves would have been the best evidence.
Wentworth gave his clerk orders to buy a heater, without telling him the kind wanted. One was brought in and set up, and witness paid no further attention to it until Hiller called his attention to the fact some time after that he had a Westinghouse heater.
Judge Coxe’s allusion to the real test, “Having seen the complainant’s design in a show case or shop window, the ordinary buyer would be very likely to mistake the defendants’ design for it if seen in similar
A word as to the case of Geo. Borgfeldt & Co. v. Weiss (C. C. A.) 265 Fed. 268. Plaintiff’s patent was of a design for dolls. The design shows both front and side perspective. It represents a doll in bathing costume, sitting with feet bare, knees drawn up, elbows resting on the knees, and chin resting-on closed hands. The defendant’s design, which was aimed, no doubt, to get as near infringement as possible and miss it, has the same general features, but with cap or hood removed, with painted or imitation hair, and painted slippers. The postures of the arms and legs are somewhat varied. It was held that there was infringement because there was such close resemblance that there was a likelihood of one being mistaken for the other by the ordinary observer. The doctrine of equivalents was applied, and it was said:
“The figure shown is clearly included within the claim of the patent, whether the doll is provided with painted hair, real hair, bathing cap, military or naval cap, or any other standard form of head dress, since all of these were well-known equivalents in the actual art to which this patent relates.”
In the case at bar, it can hardly be said that the rim of the defendant’s device and the position of the heating unit, as presented to the eye of the observer, are the equivalents of the broad annular rim and the transected posture of the heating unit of plaintiff’s design. These in combination mark the distinction.
As to this, we- are persuaded there is anticipation. But if not, the device represented by the design is so plainly simple, and composed of such simple and previously known- elements, as to render it a subject not fit for a design patent. This design is almost a counterpart of defendant’s device with the wire hood attached, the only apparent difference being as it respects the position of the heat unit.
The Shoenberg patent, No. 1,109,551, is suggestive in appearance, although the concavo-convex reflector is modified; and, as said by the learned trial judge:
“In Its more conspicuous features the plaintiff’s design also closely resembles the Warner device, the parabolic ‘Simplex,’ and the ‘Ferranti Fires.’ ”
These are all significant, and denote substantial anticipation.
But the elements which go to make up the design are all simple and well known in the art: The bowl or concavo-convex reflector, the heating unit, the wire hood, and the pedestal. They present nothing new in the utility art, and much less in the decorative art, and it would be a palpable perversion of the statute if it were permitted to forestall the use of these simple elements, either singly or in combination, by the potency of a design patent covering the combination. Soehner v. Favorite Stove & Range Co., 84 Fed. 182, 28 C. C. A. 317; Kruttschnitt v. Simmons (C. C.) 118 Fed. 851 (affirmed on appeal 122 Fed. 1020, 58 C. C. A. 111); Zidell v. Dexter (C. C. A.) 262 Fed. 145.
The principle is without applicability here as it respects patent No. 51,043, as the case turns ultimately upon the question of infringement. As to the other design, it is plain that it lacks invention.
“This cause came on to be heard before the Honorable Frank S. Dietrich, United States District Judge, at the July, 1920, term of court, on the 25th day of August. 1920, and thereupon was thereafter tried from day to day until and including the second day of September, 1920, upon the introduction of evidence oral and documentary, by each party hereto, and upon the argument of counsel; and thereupon after consideration thereof it was, on the 4th day*682 of September, 1920, ordered that the bill of complaint be dismissed with costs to defendant, and that a decree be signed, filed and entered accordingly.
“Now, therefore, it is hereby adjudged and decreed that said bill of complaint be and the same is hereby dismissed, with costs to defendant to be taxed.
“Dated November 1, 1920.
“R. S. Bean, United States District Judge.”
Upon this record it is suggested that three questions arise:
(1) Had Judge Dietrich power to act in the case at all while he was in Idaho, and not within the Northern District of California?
(2) Had he the power to act in the matter after the expiration of the term for which he was designated to hold court in the Northern District of California?
(3) Can another judge, who did not try the case, sign the decree?
The brief professes to submit the inquiry without argument. No suggestion of objection or protest against the succeeding judge’s entering or signing the decree appears in the record, and it is debatable whether the questions propounded are not merely moot questions, which the court will not answer because it would decide nothing relevant to the case.
However this may be, the face of the decree entered by Judge Bean being considered, it is in effect a nunc pro tunc decree, and one which he was duly authorized to make.
Affirmed.