Compco Corp v. Lighting, Inc

Decision Date09 March 1964
Docket NumberDAY-BRITE,No. 106,106
PartiesCOMPCO CORP., Petitioner, v. LIGHTING, INC
CourtU.S. Supreme Court

See 377 U.S. 913, 84 S.Ct. 1162.

Jerome F. Fallon, Chicago, Ill., for petitioner.

Owne J. Ooms, Chicago, Ill., for respondent.

Mr. Justice BLACK delivered the opinion of the Court.

As in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, the question here is whether the use of a state unfair competition law to give relief against the copying of an unpatented industrial design conflicts with the federal patent laws. Both Compco and Day-Brite are manufacturers of fluorescent lighting fixtures of a kind widely used in offices and stores. Day-Brite in 1955 secured from the Patent Office a design patent on a reflector having cross-ribs claimed to give both strength and attractiveness to the fixture. Day-Brite also sought, but was refused, a mechanical patent on the same device. After Day-Brite had begun selling its fixture, Compco's predecessor1 began making and selling fixtures very similar to Day-Brite's. This action was then brought by Day-Brite. One count alleged that Compco had infringed Day-Brite's design patent; a second count charged that the public and the trade had come to associate this particular design with Day-Brite, that Compco had copied Day-Brite's distinctive design so as to confuse and deceive purchasers into thinking Compco's fixtures were actually Day-Brite's, and that by doing this Compco had unfairly competed with Day-Brite. The complaint prayed for both an accounting and an injunction.

The District Court held the design patent invalid; but as to the second count, while the court did not find that Compco had engaged in any deceptive or fraudulent practices, it did hold that Compco had been guilty of unfair competition under Illinois law. The court found that the overall appearance of Compco's fixture was 'the same, to the eye of the ordinary observer, as the overall appearance' of Day-Brite's reflector, which embodied the design of the invalidated patent; that the appearance of Day-Brite's design had 'the capacity to identify (Day-Brite) in the trade and does in fact so identify (it) to the trade'; that the concurrent sale of the two products was 'likely to cause confusion in the trade'; and that '(a)ctual confusion has occurred.' On these findings the court adjudged Compco guilty of unfair competition in the sale of its fixtures, ordered Compco to account to Day-Brite for damages, and enjoined Compco 'from unfairly competing with plaintiff by the sale or attempted sale of reflectors identical to, or confusingly similar to' those made by Day-Brite. The Court of Appeals held there was substantial evidence in the record to support the District Court's finding of likely confusion and that this finding was sufficient to support a holding of unfair competition under Illinois law. 2 311 F.2d 26. Although the District Court had not made such a finding, the appellate court observed that 'several choices of ribbing were apparently available to meet the functional needs of the product,' yet Compco 'chose precisely the same design used by the plaintiff and followed it so closely as to make confusion likely.' 311 F.2d, at 30. A design which identifies its maker to the trade, the Court of Appeals held, is a 'protectable' right under Illinois law, even though the design is unpatentable.3 We granted certiorari. 374 U.S. 825, 83 S.Ct. 1868, 10 L.Ed.2d 1050.

To support its findings of likelihood of confusion and actual confusion, the trial court was able to refer to only one circumstance in the record. A plant manager who had installed some of Compco's fixtures later asked Day-Brite to service the fixtures, thinking they had been made by Day-Brite. There was no testimony given by a purchaser or by anyone else that any customer had ever been misled, deceived, or 'confused,' that is, that anyone had ever bought a Compco fixture thinking it was a Day-Brite fixture. All the record shows, as to the one instance cited by the trial court, is that both Compco and Day-Brite fixtures had been installed in the same plant, that three years later some repairs were needed, and that the manager viewing the Compco fixtures—hung at least 15 feet above the floor and arranged end to end in a continuous line so that identifying marks were hidden—thought they were Day-Brite fixtures and asked Day-Brite to service them.4 Not only is this incident suggestive only of confusion after a purchase had been made, but also there is considerable evidence of the care taken by Compco to prevent customer confusion, including clearly labeling both the fixtures and the containers in which they were shipped and not selling through manufacturers' representatives who handled competing lines.

Notwithstanding the thinness of the evidence to support findings of likely and actual confusion among purchasers, we do not find it necessary in this case to determine whether there is 'clear error' in these findings. They, like those in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, were based wholly on the fact that selling an article which is an exact copy of another unpatented artic...

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