Blisscraft of Hollywood v. United Plastics Co.

• Decision Date: 28 September 1961
• Docket Number: Docket 26829.,No. 362,362
• Citation: 294 F.2d 694
• Parties: BLISSCRAFT OF HOLLYWOOD, Plaintiff-Appellant, v. UNITED PLASTICS COMPANY, Marmax Products Corp., and Morris Shapiro, doing business as Great Eastern Housewares Company, Defendant-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

294 F.2d 694 (1961)

BLISSCRAFT OF HOLLYWOOD, Plaintiff-Appellant, v. UNITED PLASTICS COMPANY, Marmax Products Corp., and Morris Shapiro, doing business as Great Eastern Housewares Company, Defendant-Appellees.

No. 362, Docket 26829.

United States Court of Appeals Second Circuit.

Argued May 2, 1961.

Decided September 28, 1961.

Harry Cohen, New York City (Stanley I. Rosen, New York City, on the brief), for plaintiff-appellant.

Lorimer P. Brooks, New York City (Ward, Neal, Haselton, Orme & McElhannon, New York City, on the brief), for defendant-appellees.

Before LUMBARD, Chief Judge, MOORE, Circuit Judge, and STEEL, District Judge.^*

STEEL, District Judge.

Since September 1954 plaintiff has been continuously engaged in the manufacture and sale of plastic pitchers covered by Design Patent 174,793. Plaintiff sold its pitchers with labels affixed carrying the words "Poly Pitcher," and also advertised the pitchers to the trade and public under that name. In May 1957 the defendant United Plastics Company began to manufacture and sell a pitcher having an appearance similar to plaintiff's, with labels affixed bearing the words "Poly Pitcher." In August 1957 upon complaint from the plaintiff, United discontinued its "Poly Pitcher" labels, but adopted another which plaintiff claims is similar in overall appearance to its own.

Plaintiff sued United and its jobbers and customers, Marmax Products Corp., and Morris Shapiro, doing business as Great Eastern Housewares Company, for patent infringement, trademark infringement and unfair competition, and prayed for an injunction and profits and damages. The district court dismissed the action, and plaintiff has appealed. Since it is undisputed that Marmax Products and Morris Shapiro sold pitchers manufactured by United and bearing United's labels, their position in the litigation is the same as that of United, and we shall discuss the case as if United were sole defendant.

Patent Infringement (Count 1)

The district court, exercising jurisdiction under 28 U.S.C. § 1338(a), held that plaintiff's patent was invalid because the design was lacking in invention and because it was dictated by functional or mechanical requirements of which the so-called pleasing effect of the pitcher was but a by-product.

The essentials for the issuance of a design patent are stated in 35 U.S.C. § 171. The design must not only be new, original and ornamental, it must also be the result of invention.

Plaintiff's pitcher is made of polyethylene. Structurally it is cylindrical in shape, has circular horizontal ridges around the body at uniform intervals, and has a flangelike base. It has an H-shaped handle with finger indentations, a scalloped snap-on lid with an extended pouring spout, and a hinged cap attached to the lid which fits over the spout.

Reference to the prior art discloses that plaintiff's pitcher is a combination of features of containers which were well known before plaintiff's production was begun. Of course, the mere fact that a person has utilized in combination a number of elements which severally were well known will not defeat the patentability of the combination. Graff, Washbourne & Dunn v. Webster, 2 Cir., 1912, 195 F. 522, 523. But the utilization of old elements in combination must represent an exercise of inventive skill and creative talent beyond that of the ordinary designer chargeable with knowledge of the prior art. International Silver Co. v. Pomerantz, 2 Cir., 1959, 271 F.2d 69, 71; General Time Instruments Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, 854, certiorari denied 1948, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770. What plaintiff did amounted to nothing more than an unstartling regrouping of old elements which demonstrated no originality born of inventive faculty. This is not enough. Knickerbocker Plastic Co. v. Allied Molding Corp., 2 Cir., 1950, 184 F.2d 652, 655. It is not sufficient that plaintiff has shown the talent of an adapter; a manifestation of the art of the inventor was required. Blisscraft v. Rona Plastic Corp., D.C.S.D.N.Y.1954, 123 F.Supp. 552, affirmed 2 Cir., 1955, 219 F.2d 238. We agree with the district court that plaintiff's pitcher is lacking in the indispensable inventive ingredient. Plaintiff's commercial success in marketing its pitcher does not, without invention, make for patentability. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162; Toledo Pressed Steel Co. v. Standard Parts, Inc., 1939, 307 U.S. 350, 357, 59 S.Ct. 897, 83 L.Ed. 1334.

Plaintiff's patent was invalid for another reason. To be patentable, a design, in addition to being new and inventive, must be ornamental. This means that it must be the product of aesthetic skill and artistic conception. Burgess Vibrocrafters, Inc. v. Atkins Industries, 7 Cir., 1953, 204 F.2d 311. Plaintiff's pitcher has no particularly aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. Its lid, body, handle and base retain merely their individual characteristics when used in conjunction with each other without producing any combined artistic effect. The reaction which the pitcher inspires is simply that of the usual, useful and not unattractive piece of kitchenware. The design fails to meet the ornamental prerequisite of the statute.

While the issuance of the patent entitles it to a presumption of validity, this presumption is rebuttable. Here it must yield to the evidence of lack of invention and lack of ornamentation. The view which we take of the matter makes it unnecessary for us to consider whether the utilitarian or mechanical features of the pitcher were so dominant in the design conception as to prevent patentability. The issue of infringement is, of course, moot.

Unfair Competition (Count 2)

This count charges defendant with unfair competition in selling plastic pitchers which copy the form and configuration of the pitchers manufactured by similar to the labels used by plaintiff. plaintiff, and in affixing labels deceptively The complaint alleges that as a result of the sale, advertisement and promotion by plaintiff, the appearance of its pitchers and labels acquired in the trade and with the purchasing public a secondary meaning which identified all pitchers having such form and configuration and bearing such labels as pitchers of plaintiff's exclusive manufacture. It is alleged that defendant's action was taken with the intent and purpose of appropriating for itself the good will which plaintiff had established for itself and its pitchers, that such action is likely to cause confusion between pitchers manufactured by plaintiff and those manufactured by defendant, and to permit defendant and its dealers and retailers to substitute and palm off its pitchers as and for the genuine "Poly Pitcher" of plaintiff. The district court held that plaintiff was entitled to no relief under this count.¹

Preliminarily, a word should be said about the law to be applied. Jurisdiction of the district court of the Count 2 claim was asserted under 28 U.S.C. § 1332 upon the basis of diversity of citizenship, and under 28 U.S.C. § 1338(b) upon the ground that an unfair competition claim was joined with a substantial and related claim under the patent or trademark laws. The unfair competition claims which were asserted have their source in state law and would appear to require the application of state law, even though Count 1 alleges a claim of patent infringement based upon federal law. Maternally Yours, Inc. v. Your Maternity Shop, Inc., 2 Cir., 1956, 234 F.2d 538, 540-541, note 1. Although the complaint alleges that the wrongs of defendant occurred in the State of New York and elsewhere throughout the United States, there is no evidence where its sales were made apart from what possibly may be implied from the fact that plaintiff had a place of business in Hollywood, California and defendant in Fitchburg, Massachusetts. Neither the district court nor the parties have raised any question about whether federal or state law should be applied or have asserted that the law of one state as against that of another is controlling or would make any difference. Under the circumstances, we think that we are warranted in relying upon the "indeterminate general law." Maternally Yours, Inc. v. Your Maternity Shop, Inc., supra, at page 540, note 1; American Safety Table Co. v. Schreiber, 2 Cir., 1959, 269 F.2d 255, 271, certiorari denied 361 U.S. 915, 80 S.Ct. 259, 4 L.Ed.2d 185.

The district court held that plaintiff had failed to establish that the appearance of its pitcher had acquired a secondary meaning. To establish a secondary meaning for an article it must be shown that the design is a mark of distinction identifying the source of the article and that purchasers are moved to buy it because of its source. Lucien Lelong v. Lander Co., 2 Cir., 1947, 164 F.2d 395, 397. Plaintiff's proof fails to meet this test. The letters written by customers to plaintiff contained in Exhibits V-1, 2 and 3 do not establish a secondary meaning for the appearance of the pitchers. The letters, for the most part, are simply orders of caps and spouts to replace those which had been lost, or reorders of the pitchers themselves. Since plaintiff's name, as the manufacturer, appeared upon the labels, this identified plaintiff as the manufacturing source and reasonably explains why the letters were sent to the plaintiff.

Despite the fact that plaintiff's pitchers have not acquired a secondary meaning, relief might still be granted if plaintiff had established either (1) palming off by defendant, (2) actual deception of purchasers, or (3) a violation by defendant of plaintiff's property rights. Norwich Pharmacal Co. v. Sterling Drug, Inc., 2 Cir., 1959, 271 F.2d 569, 571, certiorari denied 1960, 362 U.S. 919, 80 S.Ct. 671, 4 L.Ed.2d 739. Here, the record fails to...