VACHERON & CONSTANTIN-LE COULTRE WATCHES, Inc., Appellant, v. BENRUS WATCH COMPANY, Inc., Appellee.
No. 263, Docket 24934.
United States Court of Appeals Second Circuit.
Decided Oct. 21, 1958.
Argued March 27 and 28, 1958.
The present section, although worded slightly differently, is sufficiently close to the statute of 1942 to make it pertinent to our inquiry.
We conclude that Section 6(m) of the Act, [
We think the meaning of the statute clear, and that Sec. 1622.44 of the Regulations is proper, and not, as contended by appellant, in conflict with Sec. 6(m) and ultra vires.
Appellant argues that since the registrant should have been placed in Class IV-F, there was no basis in fact (Dickinson v. United States, 346 U.S. 389, 74 S.Ct. 152, 98 L.Ed. 132) for his classification in I-O. There existed no mandate or direction requiring appellant to be placed in Class IV-F. There is ample basis in fact to sustain the I-O classification.
Our problem has been considered in a cursory manner in three other cases. Doty v. United States, 8 Cir., 1955, 218 F.2d 93, at page 95, rejects a similar contention in one paragraph. United States v. Palmer, 3 Cir., 1955, 223 F.2d 893, at page 895, similarly rejects a like contention. See, United States v. Bouziden, D.C.Okl.1952, 108 F.Supp. 395, at page 397.
The judgment is affirmed.
Stanton T. Lawrence, Jr., New York City, Pennie, Edmonds, Morton, Barrows & Taylor, W. Brown Morton, and Robert McKay, New York City, of counsel, for appellant.
Harold James, New York City, James & Franklin, New York City, of counsel, for appellee.
Before CLARK, Chief Judge, and HAND and LUMBARD, Circuit Judges.
This appeal arises upon a complaint in two counts—one for the defendant‘s infringement of a registered copyright upon a wrist watch, and the other for infringement of Design Patent No. 178,091 upon the same watch. The complaint also contained a count for unfair competition which was dismissed, but from which the plaintiff has not appealed. The defendant moved to dismiss the copyright count because the watch was not copyrightable, and so Judge Dimock decided. Hence he found it unnecessary to hold whether
It is indeed true that only by an inspection of the design patent and of the actual watches put in evidence can their similarities and differences be compared; and that of course is true, not only as to the watches of the parties to the action, but as to those that the defendant put in
“Plaintiff‘s Galaxy is a wrist watch made to sell at $325. Its distinctive feature is the appearancе of its face. In place of numerals there are jeweled ‘sticks’ of equal length and width except the stick of the six o‘clock position which is shortened to permit the introduction of the name ‘Le Coultre ®.’ The watch has no hands in the usual sense. Instead, transparent and practically invisible rotating discs, concentric with the round face, are substituted and, at a point at the perimeter of each disc, is a round mounting containing a jewel, one mounting being smaller than the other and presumably serving as an hour ‘hand’ while the larger indicates the minutes. At the axis of the discs appears a polygonal metal head cut with facets like a rose-cut diamond. Inside the ends of the sticks, and concentric with the discs, there is a circle graduated into sixty minutes.
“Defendant‘s Elegance Constellation is made to sell at $295. In general appearance it is very similar to plaintiff‘s Galaxy, the difference being: (1) The sticks at the four quarter positions are the only ones that are jeweled while the others are knurled with much the same effect. (2) Instead of a short stick at six o‘clock, it is at twelve o‘clock and the word, ‘Benrus’ there appears. (3) Instead of the two round jewel holders on the invisible discs, there appears on one an arrow-shaped metallic indicator scored so that it reflects the light from two planes and on the other a triangular metallic indicator in which a jewel is mounted. (4) The head at the axis is flat and cut with a six pointed star instead of simulating a rose-cut diamond. (5) The circle inside of the ends of the sticks is not graduated into minutes. (6) Instead of the conventional attachments for the wrist band which appear on plaintiff‘s Galaxy, the Elegance Constellation employs lugs, of a shape somewhat similar to the angular points of the jaws on a pair of pliers, which give the watch case the effect of tapering from the greatest diameter of the watch to the point where it meets the wrist band.”
We first take up the copyright count. We do not think it necessary to decide whether thе plaintiff‘s watch was copyrightable under
The next decision was of this court in 1921 (Lumiere v. Pathé Exchange, Inc., 275 F. 428), affirming a judgment dismissing an action for infringement, though without prejudice, because the copyright owner, the plaintiff, had deposited with the Register only one, instead of two, copies as the statute required. The point was not raised or decided whether, had the plaintiff deposited two copies and the Register refused to issue any certificate under
Bouvé v. Twentieth Century-Fox Film Corporation, 1941, 74 App.D.C. 271, 122 F.2d 51, was an appeal from a judgment of the District Court, 33 F.Supp. 462, in an action under
In the case at bar it might be argued that the Register‘s decision whether the plaintiff‘s wrist watch was a “work of art” within
We find confirmation of our conclusion in the text of the last sentence of
Coming next to the design patent, we agree that Judge Dimock was justified in holding that the defendant had put in evidence all the prior art in the form of earlier disclosures and earlier watches on which it wished to rest its defense of anticipation. If validity was to be determined only by a comparison of these with the disclosure, and that was the whole of any possibly relevant evidence, it would have been proper to decide the claims summarily. However, we do not read the patent act quite so narrowly; the validity of design patents like that of all patents depends upon the general state of the industry involved. The amendment of 1952—
A design patent has no claims, so that it is impossible to select any specific combination of the features of the design on which alone its validity may rest; it will cover any combination of the component parts disclosed that is in fact new and was beyond the compass of a designer of ordinary skill. In the case at bar there were in the prior art “sticks” and “floaters” in combination, as for example in Gardner‘s clocks in 1946 (Des. Pats. 146,101 and 146,102). “Sticks,” although not jewelled, were at times made of metal, and raised above, or depressed below, the face of the watch to catch the light and sparkle so as to give somewhat the effect of a jewel (Dupertuis, Des. Pat. 129,370 (1940); Exhibit 12, Defendant‘s Appendix, p. 74a). Moreover, in Exhibit 22 (Jaeger, No. 257,783 (1949)) the face of the watch, which shows only the ends of the hour and minute hands in combination with “sticks” was very close in appearance to the combination of “sticks” and “floaters” of the plaintiff‘s patent here. However, even though we should say that this was pro tanto an equivalent of a combination of “sticks” and “floaters,” we do not find anywhere in the record such a combination in which these two elements were jewelled or otherwise made to sparkle.
The issue, as we view it, is what was in fact the combination that caught the taste of the public and succeeded in attracting purchasers in large number; for a design patent like this, that has no utility as such, is directed only to appearances that please the taste. Assuming that the combination of “sticks” and “floaters” was old, that of making them sparkle was not. Moreover, a number of years had passed before the patent was applied fоr, during which all the elements of the design were disclosed; yet this combination had not been shown. That is a situation in which it was permissible to say that since the combination had been at hand for so long and turned out to be esthetically pleasing, it was a legitimate inference that it was not obvious to those skilled in the art. Nevertheless, it seems to us that it was necessary to adduce the testimony of those so skilled as to whether in their judgment it was the combination of the three elements that constituted the attraction of the watch. Without such testimony we cannot say that the success of the watch was not due to the skill of the patentee in marketing its goods. We must therefore await a trial in which the conditions of the industry may be explored before we pass upon the issue of validity. The judgment will be reversed and the cause remanded for such a trial.
The judgment dismissing the copyright count will be affirmed. The judgment granting a permanent injunction upon the design patent count will be reversed, and the cause remanded for trial.
LUMBARD, Circuit Judge (concurring).
While I agree with Judge Dimock that this is a case in which summary judgment sustaining the design patent is permissible, I concur with Judge HAND‘s opinion to send that part of the case back for further hearing as it is the only common denominator on which two of us can agree for disposition of the design patent cause of action.
CLARK, Chief Judge (dissenting).
This interesting case presents some novel questions which we have not been able to answer without some difference of opinion. All the judges who have passed upon the issues have substantially agreed that copying of plaintiff‘s watch would call for some remedial action by the court, but we have disagreed on the rationale to support this conclusion. The prevailing view to date appears to be that we should rest upon infringement of a design patent, a view which presents pitfalls and has limitations, as I shall endeavor to point out. To me the more workable, though possibly more novel, course is that of copyright infringement.
As the opinion herewith subsumes, a design patent is after all a patent, i. e., a government grant of a monopoly for a limited time for the development and exploitation of a really new contribution as the product of inventive genius—something more than “would have been obvious at the time the inventiоn was made to a person having ordinary skill in the art to which said subject matter pertains.”
But for my part I do not see how this patent can possibly prevail against the prior art; there is literally nothing in it which can be considered even new. This, I think, is almost, if not quite, admitted with commendable candor in the opinion herewith, which calls the roll of some of the pertinent prior patents and shows the lack of novelty in the prior art of “sticks” and “floaters” in various combinations for clock or watch dials. The three patents cited in the opinion, those of Gardner, Dupertuis, and Jaeger, are particularly striking and—when seen in illustration more vivid than cold description—really leave nothing more to be imagined. It is urged that the use of jewels to catch the light and sparkle cаn be relied on as a dependable element of novelty. But this is surely incorrect. For this element appears in previous patents, indeed as early as the Blumstein Design Patent 96,642 of 1935 for a “watch dial” which used only four numerals, instead of twelve, and provided “indications” for the intermediate hours, “the indications being provided with baguette precious stones and the numerals being studded with precious stones.”
Even more striking, if possible, on this point was the deposition testimony of plaintiff‘s experts. Thus Sadow, one of its officers, testified that before plaintiff‘s watch came on the market sticks were used “quite commonly,” that he had seen “a great many watches with jewels on the sticks,” and that jeweled sticks and individual gems had been employed in line on a stick. Schwalm, a manufacturer of watch dials, went even further to testify that “[d]iamonds on the dials in place of numbers are a common practice” for some 20 years before. Here I am attempting not a complete exposition, but only a brief summary of all the wealth of evidence disclosed of record; thus I have not by any means covered all the prior watches, such as the Swiss “Mystere,” whose “intriguing sweep second” surely forestalls plaintiff‘s conception. About all that Sadow could claim as an advance was the profusion of diamonds, i. e., the number, appearing on his dial. How that can constitutе invention is not apparent to me.
Since the lack of invention seems to me so thoroughly demonstrated, I do not perceive the occasion for or any utility in the remand for a trial. It should be noted that this was not a judgment rendered upon mere affidavits; there were before the court, in addition to the many exhibits of the prior art, three important and revealing depositions, with full examination and cross-examination—the two noted above and a third that of a vice-president of the defendant. The opinion suggests a reaching out for some means by expert or industry testimony of sustaining a patent whose weaknesses have become apparent. But a rеading of these depositions shows that nothing really new or informative can be expected beyond what these gentlemen, skilled in all aspects of the business, have already told us. I venture to suggest that any of us can write out in advance and almost word for word the testimony of the new opposing experts which the remand may be expected to produce. And I suggest that in no event can such testimony gloss over or obscure what the prior art has taught us. There may well develop an amusing, if unconvincing, anomaly in that the opinion seems to seek the impossible, namely, expert evidence that commercial success here was not at all due to advertising
On the other hand, the copyright concept affords a different emphasis, one much more directly in point in a case such as this than the patent concept of novelty or new invention. It is that of a prohibition for a term (one longer of course than that of the patent monopoly) against direct copying. Mazer v. Stein, 347 U.S. 201, 217, 218, 74 S.Ct. 460, 98 L.Ed. 630; Alfred Bell & Co. v. Catalda Fine Arts, supra, 2 Cir., 191 F.2d 99, 101, 103.1 Is not that the more direct issue here? The only difficulty, it seems to me, is our somewhat hidebound conception that copyright is somehow limited to writings. But this idea is now thoroughly dispelled by the Supreme Court, which in 1954 in the Mazer case upheld copyright protection of china statuettes of male and female dancing figures used as bases for fully equipped electric lamps. Justice Reed‘s scholarly opinion, with its detailed historical résumé, obviously gave new stimulus to the uses of copyright protection. It was the subject of extensive disсussion in the law reviews, of which the comments in 39 Cornell L. Q. 725 and 68 Harv.L. Rev. 517 are perhaps representative. Already the Copyright Office had given a broad interpretation to the “works of artistic craftsmanship,” such as “artistic jewelry,” as covered in the Regulations, 37 CFR § 202.10(a) (formerly § 202.8),
The opinion herewith, while assuming copyrightability for the purposes of decision, finds a technical barrier against all relief under the Copyright Act because the Register of Copyrights had refused a certificate. It should be noted that plaintiff sought registration first on September 13, 1955, and again on January 4, 1957, in each case with appropriate fee; and each time a certificate wаs refused by an official signing himself “Chief, Examining Division,” on the ground that the work deposited was not a proper subject for registration of copyright. This was, therefore, purely a ruling of law which was erroneous and beyond the authority of the official making it. For reasons which I shall advance I doubt if the ministerial grant of a certificate is a condition precedent to a suit for copyright; but however this question is answered, it seems to me clear that a plaintiff situated as is this one is entitled to at least interim relief
The question arises because in
At the outset we should have in mind the distinction at times overlooked between copyrights and patents and between the respective duties and authorities of the Register of Copyrights and the Commissioner of Patents. A patent is a governmental grant, made by the Commissioner after careful examination and in the exercise of important quasi-judicial functions,
Hence the one clear decision on the point says and holds: “and, although registration was refused, yet it [complainаnt] fully complied with the requirements of law, and is entitled to maintain this suit if it had any statutory right to the extension [of the copyright].” White-Smith Music Pub. Co. v. Goff, 1 Cir., 187 F. 247. This is very clearly decision and not dicta, both from its form of expression and from the fact that, once the right to sue was settled, adjudication was then made on the merits. Moreover, while Washingtonian Pub. Co. v. Pearson, 306 U.S. 30, 59 S.Ct. 397, 83 L.Ed. 470—reversing the restrictive decision below, Pearson v. Washingtonian Pub. Co., 68 App.D.C. 373, 98 F.2d 245—is not explicit on our present issue, its holding and discussion certainly tend in the same direction. It held that the right to sue under the Act for infringement is not lost by mere delay in depositing copies of the copyrighted work, a delay there of fourteen months after the date of publication and six months after the infringement. Thus the Court says, fоr example: “* * * proper publication gives notice to all the world that immediate copyright exists. One charged with such notice is not injured by mere failure to deposit copies. The duty not to infringe is unaffected thereby. A certificate of registration * * * apparently may be obtained at any time and becomes evidence of the facts stated therein.” 306 U.S. 30, 40-41, 59 S.Ct. 397, 402.
Against this reasoning only this Circuit is cited as opposed; but even here the authority cited does not bear this out. In Lumiere v. Pathé Exchange, 2 Cir., 275 F. 428, where a suit was dismissed without prejudice, the court actually held that plaintiff had failed to take the proper steps; he had failed to file a proper registration after publication, and his first registration to claim copyright in an unpublished work did not carry over after publication. Hence it does not cover our case. Note, too, that the majority (following L. Hand, J., below) held that the right to sue was not lost, but only postponed until proper registration—the view later accepted in Washingtonian Pub. Co. v. Pearson, supra, 306 U.S. 30, 59 S.Ct. 397, 83 L.Ed. 470. So, two district judges have followed what they thought was the decision to hold suit merely postponed: Knox, J., in Rosedale v. News Syndicate Co., D.C.S.D.N.Y., 39 F.Supp. 357, and Noonan, J., in Algonquin Music, Inc. v. Mills Music, Inc., D.C.S.D.N.Y., 93 F. Supp. 268. (The only other case brought up, United States v. Backer, 2 Cir., 134 F.2d 533, dealt only with the question of the applicant‘s compliance with the statutory requirements.) In the Rosedale case Knox, J., says that he would properly aсcept the claim after formal registration by way of supplemental complaint. This eminently correct procedure points the way to clearly permissible procedure here; for we should at least direct the district court to hold this case, continuing the injunction, until plaintiff could persuade the Register to comply with the law and could then file a supplemental complaint,
Hence I would continue the injunctive relief granted by Judge Dimock below,
E. A. DAWLEY, Jr., Appellant, v. CITY OF NORFOLK, VIRGINIA, a municipal corporation; Thomas F. Maxwell, City Manager, City of Norfolk, Virginia; Calvin H. Dalby, Director of Public Safety, City of Norfolk, Virginia; et al., Appellees.
No. 7687.
United States Court of Appeals Fourth Circuit.
Decided Oct. 15, 1958.
Argued Oct. 14, 1958.
E. A. Dawley, Jr., Norfolk, Va., in pro. per.
Leonard H. Davis, City Atty., Norfolk, Va. (Virgil S. Gore, Jr., Asst. City Atty., Norfolk, Va., on the brief), for appellees.
Before SOBELOFF, Chief Judge, and SOPER and HAYNSWORTH, Circuit Judges.
PER CURIAM.
E. A. Dawley, Jr., an attorney of the Negro race practicing law at Norfolk, Virginia, seeks in this case a declaratory judgment and a permanent injunction restraining the City of Norfolk, Virginia, and certain of its administrative officers from maintaining certain signs in the State courthouse in that city indicating the segregation of the races in the public restrooms maintained in the building for men and women. The District Judge after hearing, without expressing approval of the practice and without prejudice to the right of the plaintiff to seek an appropriate remedy in the State court, dismissed the complaint. We think this action was properly taken. Whether or not the Federal court should take cognizance of the case and grant the relief prayed was within the sound discretion of the District Judge sitting in a court of equity. The matter was one which affected the internal operations of the court of the State and within its power to regulate. Under these circumstances, interference on the part of the Federal court was not required and the action of the District Judge in dismissing the case