222 F.2d 581 (6th Cir. 1955), 12310, West Point Mfg. Co. v. Detroit Stamping Co.

Docket Nº:12310.
Citation:222 F.2d 581, 105 U.S.P.Q. 200
Party Name:WEST POINT MANUFACTURING COMPANY, Defendant-Appellant, v. DETROIT STAMPING COMPANY, Plaintiff-Appellee.
Case Date:April 26, 1955
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit
 
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Page 581

222 F.2d 581 (6th Cir. 1955)

105 U.S.P.Q. 200

WEST POINT MANUFACTURING COMPANY, Defendant-Appellant,

v.

DETROIT STAMPING COMPANY, Plaintiff-Appellee.

No. 12310.

United States Court of Appeals, Sixth Circuit.

April 26, 1955

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[Copyrighted Material Omitted]

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Hugh K. Davidson, Detroit, Mich. (John H. Burke, Detroit, Mich., on the brief), for appellant.

Lloyd M. Forster, Detroit, Mich. (Farley, Forster & Farley, Detroit, Mich., on the brief), for appellee.

Before MARTIN, McALLISTER, and STEWART, Circuit Judges.

McALLISTER, Circuit Judge.

Upon the expiration of appellee's patent for a toggle clamp, a device for clamping parts in industrial production, appellant copied a number of appellee's clamps and prepared to advertise, manufacture, and sell them to the industry with its own trade-mark affixed in place of appellee's trade-mark.

To forestall such action, appellee filed a complaint, claiming that, although the patent had expired, appellant, under the Lanham Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., was guilty of unfair competition in copying and manufacturing such clamps, and asked that appellant be enjoined from advertising, manufacturing and selling toggle clamps, 'confusingly similar in appearance' to appellee's clamps.

Proofs were taken by deposition and by way of answers to interrogatories. From this evidence, it appeared that upon the expiration of appellee's patent, appellant had exactly copied appellee's clamps, affixing its trade-mark to the clamps in place of appellee's trade-mark; and that appellant had advertised its clamps for sale, displaying in its advertisements an exact copy of appellee's clamps, the likeness of which had been reproduced for such purpose from a photograph of appellee's clamps.

Upon motions by both parties for summary judgment, the district court held that appellant was guilty of unfair competition for the reason that the evidence showed that appellant had copied not only the functional, but also the nonfunctional parts of appellee's patented clamp; that the nonfunctional parts gave appellee's clamp a general appearance identifying and distinguishing it as the particular product made by appellee; that because of such general appearance and shape of the clamp, so identified and distinguished, the patented article had attained a special significance, or secondary meaning, as to which appellee was entitled to protection against copiers; that, having copied several nonfunctional parts of appellee's clamp which gave essence to the general appearance by which it was identified and distinguished as having been made by appellee, appellant was guilty of unfair competition; that appellant's trade-mark affixed to the clamps which it made was not sufficient to avoid a probable

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'palming off' of appellant's product as that of appellee; that since appellee's product had acquired a secondary meaning and appellant could have made its clamp in a slightly different way while utilizing the patented features, the law required appellant to distinguish its article from that of appellee to the extent that the public would not be misled or confused; and that it was 'actionable unfair competition to unnecessarily copy non-functional parts of any article or device which give essence to a general appearance identifying and distinguishing that particular product as associated with a manufacturer whose reputation is of great importance in securing sales.' (122 F.Supp. 743) The district court, therefore, adjudged appellant to be guilty of unfair competition, and enjoined it from 'advertising, offering for sale, manufacturing and selling toggle clamps confusingly similar in appearance to plaintiff's toggle clamps.' From this decision of the district court, appeal was duly taken.

Some time after the filing of the appeal, appellee filed a motion in the district court for an order enforcing the injunction which was, in effect, a petition for an order to show cause why appellant should not be held in contempt of court for violation of the injunction. Upon the hearing of the motion, in a colloquy between the judge and counsel for both parties that extends for one hundred pages of the transcript of the record, appellant attempted to demonstrate to the court that it had made sufficient changes in the appearance of its clamps to avoid disobedience of the court's injunction; and both parties then pointed out the similarities and differences in their clamps as compared to each other, as well as to clamps manufactured by third parties.

The district court severely reprimanded appellant during the course of this hearing, stating that it was prepared to punish it for contempt of court for violation of its injunction. However, appellant pointed out to the court a number of alterations it had made in the clamp subsequent to the issuance of the injunction. When it was stated that appellant, as one instance, had changed the color of its rubber handle from red, which was the color used by the appellee, to white, appellee's counsel proceeded to inform the court of the similarities still existing between the clamps, and called attention to the fact that appellant, instead of copying appellee's claw form of stop, could have used a metal pin for a forward stop in the clamp; that a curve in the contour of appellee's clamp did not have to be imitated; that instead of having two thicknesses of metal for the handle, appellant could have formed a loop metal handle; that in one of the clamps, appellant, instead of a 'T' handle, could have used a straight up-and-down handle, or a handle projecting to one side, and a number of other small changes were pointed out to the effect that the patent features could have been availed of by appellant to make a clamp 'that is not confusing to the public.' In reply to all of the foregoing, appellant submitted that substantially everything in the clamp which it copied was functional rather than nonfunctional, and that it was so admitted in the testimony of appellee's president; and that, further, if appellant adopted the changes in the clamp pointed out by appellee, it would only be copying other forms of appellee's clamps, or infringing on patented clamps of third parties. The trial court seemed impressed by the evidence that appellant could not make the clamps with the patented features unless it duplicated either the clamps in question or other clamps made by appellee- or infringed upon patented features of clamps made by third parties. Furthermore, in considering the testimony of appellee's president that everything about appellee's clamp was 'functional to an extent, ' the court suggested the possibility of reconsideration of its views on a new trial, stating that it might entertain a motion for a new trial and see what

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could be done, but that, in the meanwhile, appellant could not manufacture the clamps.

However, in the end, the district court arrived at the view that if appellee could show how appellant could take advantage of all of the patented features of the clamp and, at the same time, make the changes which appellee's counsel had outlined, then appellant would be guilty of unfair competition unless such changes were made. The court thereupon filed supplementary findings of fact in which it set forth that the copying by appellant of all of the details of appellee's clamps (except color of finish) was unnecessary from a functional standpoint; that numerous functionally equivalent, alternative constructions were available for the various clamp elements; that it was unnecessary for appellant to copy the distinctive appearance of appellee's handle with a plastic handle grip, as well as appellee's distinctive claw-shaped forward stop or rear stop ears projecting from the base, or the distinctive curved upper contours of the base elements; that instead, appellant could have employed a handle formed as a continuous open loop or a wooden handle grip; that in place of the claw-shaped forward stop, it could have employed a stop pin, or button welded to the handle elements; that it could have used a rear stop pin instead of the rear stop ears; that in place of the concavely curved upper surfaces of appellee's clamp base, appellant could have employed a convex curve, or any other contour different from appellee; as well as several other small differences. The court further stated that the exact copying of appellee's clamps in appellant's advertising constituted unfair competition. Accordingly, the district court found that appellant had violated the injunction and had thereby incurred the penalties of such violation.

On appeal, it is the primary contention of appellant that upon the expiration of appellee's patent for the clamp in question, there became dedicated to the public the patented article in the identical form in which it had theretofore been produced and marketed by the appellee. Moreover, appellant submits that, by affixing its trade-mark clearly and prominently upon the clamps manufactured by it, and by the prominent display of its name as manufacturer of the clamps in its advertisements, appellant clearly indicated to the public that the clamps were manufactured by it, and were not the product of appellee's manufacture. Furthermore, it is the claim of appellant that, contrary to the findings of the district court, all of the parts of appellee's clamp which it copied were functional; that upon the expiration of appellee's patent, appellant could not have copied the clamp in question other than by making an exact copy, unless it either imitated other forms of the clamp made by appellee or other forms of clamps already protected by patents in the hands of competitors; that it was unreasonable, as a condition of availing itself of appellee's patent clamp, to require appellant to...

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