Spaulding v. Guardian Light Company, 12474.

• Decision Date: 29 June 1959
• Docket Number: No. 12474.,12474.
• Citation: 267 F.2d 111
• Parties: Joseph H. SPAULDING, dba Whiteway Manufacturing Company, Plaintiff-Appellant, v. GUARDIAN LIGHT COMPANY, Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

267 F.2d 111 (1959)

Joseph H. SPAULDING, dba Whiteway Manufacturing Company, Plaintiff-Appellant, v. GUARDIAN LIGHT COMPANY, Inc., Defendant-Appellee.

No. 12474.

United States Court of Appeals Seventh Circuit.

April 28, 1959.

Rehearing Denied June 29, 1959.

J. Warren Kinney, Jr., Cincinnati, Ohio, Howard T. Markey, Chicago, Ill., Parker & Carter, Chicago, Ill., of counsel, for appellant.

Charles B. Cannon, Geo. H. Wallace, Thomas E. Dorn, Wallace & Cannon, Chicago, Ill., for appellee.

Before DUFFY, Chief Judge, and SCHNACKENBERG and KNOCH, Circuit Judges.

DUFFY, Chief Judge.

This is a suit for the alleged infringement of Design Patent No. D-168,974 granted to Joseph H. Spaulding on March 3, 1953, on a design for a "Fluorescent Lighting Fixture." The application was filed October 30, 1952. Defendant filed a counterclaim for a declaratory judgment of invalidity and non-infringement.

The patent in suit discloses a lighting fixture in the form of a housing for fluorescent lighting equipment. The patent contains four drawings. Fig. 1 shows the inclined sides, the bottom and one end of the fixture; Fig. 2 is a bottom plan view; Fig. 3 is a top plan view, and Fig. 4 is an end elevational view.

The District Court held that if the patent were valid, defendant infringed, but further held that the patent was invalid. The basis for such decision was that the patent in suit was invalid a) because of lack of patentable design novelty, originality and design invention; b) because the design shown in the patent is functional and utilitarian and not ornamental; c) because the design of the patent represents merely the expected skill of designers and mechanics working in the art; and d) because of lack of patentable design novelty over the prior art.

The parties to this suit are competitors in the business of manufacturing and selling lighting equipment for illuminating the pump islands and adjacent areas of gasoline service stations and the exteriors of service station buildings.

Plaintiff claims to have pioneered the so-called angle bottom light which he introduced under Ulrick Patent No. D-168,812. Plaintiff asserts that although this light was vigorously promoted and threw more and better light over a greater area than previous lighting fixtures, it was a commercial flop because of its appearance. During the latter part of 1951, plaintiff claims he worked upon the design of a new fixture which would have "eye appeal." Three sample light fixtures embodying the new design were made for market testing in December, 1951. One hundred fifty of the Spaulding Angle lights were put up for sale in February, 1952, and plaintiff's witnesses testified they were very well received by the trade. Additional lights with many features of the patented design were sold but defendant claims that such fixtures were not made in accordance with the teachings of the patent in suit.

The design shown in the patent is of a plain unornamented geometrical configuration and consists of an elongated housing having a pair of end walls, a top wall, a flat longitudinally extending bottom panel and a pair of inclined side bottom panels which extend upwardly from the center bottom panel at an angle of approximately 15° from the horizontal. When these lighting fixtures are installed at filling stations in the usual manner, they rest on tall pipes or standards, usually nine feet above ground level.

The top wall design is shown in Figs. 3 and 4 of the drawings of the patent in suit. The top wall of the fixture is slightly pyramidal in shape. The top wall contains four triangular shaped panels each of which has its apex at the center of the top wall of the housing. Two of these panels extend from the center downwardly and outwardly to the ends of the side walls of the housing. The other two extend downwardly and outwardly to the ends of the end walls of the housing.

There is no description in the specifications or in the claim as to any dominant feature of the design. The claim of the patent in suit is commensurate with the drawings, and it incorporates by reference the design shown in the drawings and reads: "The ornamental design for a fluorescent lighting fixture, as shown." It has been held that where a patent did not point out any particular feature of novelty, every element of the design was essential. Dixie-Vortex Co. v. Lily-Tulip Cup Corp., 2 Cir., 95 F.2d 461.

Title 35 U.S.C.A. § 171 reads: "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs except as otherwise provided." The present statute omits the term "useful" which was employed in earlier statutes.

A design patent, in order to be valid, must disclose a design that is new, original and ornamental, unanticipated and inventive in character, and beyond the skill of the ordinary designer or draftsman. Hopkins v. Waco Products, Inc., 7 Cir., 205 F.2d 221...