Barofsky v. General Electric Corporation

Decision Date28 June 1968
Docket NumberNo. 21415.,21415.
Citation396 F.2d 340
PartiesJack BAROFSKY, Appellant, v. GENERAL ELECTRIC CORPORATION, Appellee.
CourtU.S. Court of Appeals — Ninth Circuit

William H. Pavitt (argued), of Smyth, Roston & Pavitt, Los Angeles, Cal., for appellant.

Ford Harris, Jr. (argued), of Harris, Keich, Russell & Kern, Los Angeles, Cal., for appellee.

Before HAMLEY, and ELY, Circuit Judges, and POWELL, District Judge.

HAMLEY, Circuit Judge:

This suit involves the validity and infringement of U. S. Design Patent No. D-176,492, issued to Jack Barofsky on January 3, 1956. Barofsky commenced the action against General Electric Corporation charging infringement of his patent and seeking damages and other relief. General Electric answered, denying infringement and asking for a declaratory judgment that the Barofsky patent is invalid.

After certain discovery activity, General Electric moved for summary judgment in its favor on the alternative grounds that the Barofsky patent is invalid and that it has not been infringed by defendant. Plaintiff opposed the motion for summary judgment and both parties filed additional evidentiary materials. The district court granted summary judgment for General Electric on the ground that the Barofsky patent is invalid, and did not reach the infringement issue. Barofsky appeals.

Barofsky's design patent is entitled, "Television Cabinet or Similar Article." It depicts a rectangular box-like central cabinet in the upper part of which is provided a smaller rectangular space which would presumably house a television screen or some other electronic entertainment component. Barofsky claims no novelty for his design of the central cabinet.

The dominant features claimed for his design relate to the doors attached by hinges to the sides of the center cabinet. These are shallow rectangular boxes approximately one-half the width and one-third the depth of the cabinet, having a plain and apparently solid frame and a front and rear surface of a mesh-like material. These frames have a narrow molding which serves to retain the cloth or other fabric on the doors, and its width is not material to Barofsky's patent. Each of the doors is provided with a pull knob.

The doors are provided, along their outer edges, with a bevel of about 45°, which is plainly apparent when the doors are closed. The beveled edges make it possible to open the doors so that they extend back from the front face of the central cabinet at an obtuse angle of about 220°. Without these bevels the maximum angle of opening, as compared to the face of the cabinet, would be 180°, for at that point the hinged side of the door would be flush with the side of the cabinet. When both doors are closed they completely cover the face of the cabinet.

While the patent in suit does not specifically state that the doors are intended to be hollow, this is indicated by the relative thickness of the doors as compared to the depth of the cabinet, and by the mesh-like appearance and apparently sound-permeable quality of the front and rear surfaces of the doors.

In order for a design patent to be valid, it must be: (1) new, (2) original, (3) ornamental, (4) non-obvious to a person of ordinary skill in the art, and (5) not primarily for the purpose of serving a functional or utilitarian purpose. Payne Metal Enterprises, Ltd. v. McPhee, 9 Cir., 382 F.2d 541, 543, 546.

The district court prepared and filed an extensive memorandum opinion supporting its order granting summary judgment for defendant. In the final paragraph of that opinion, immediately preceding the decretal provision, the court stated two reasons why the patent is invalid. These reasons are: the design is not ornamental as required by 35 U.S.C. § 171 (1964), and there is no invention in view of the prior art, citing 35 U.S.C. § 103 (1964). It will be noted that these reasons relate to the third and fourth essentials of a design patent listed above.

The memorandum decision, read as a whole, however, indicates that the district court also determined that the patent is invalid for the additional reason that the essential elements of the design are primarily for the purpose of serving a functional or utilitarian purpose — this reason relating to the fifth essential of a design patent, as listed above.1

Barofsky advances several reasons why, in his view, the district court erred in holding the design patent invalid on the ground that its salient features were intended to serve a functional purpose.

The first of these is that a design patent is not rendered invalid merely because the article of manufacture which is the subject of the design may, in addition to having a pleasing appearance, also perform a useful function.

This is undoubtedly the law. See Robert W. Brown & Co., Inc. v. De Bell, 9 Cir., 243 F.2d 200, 202-203. But, as we stated in Payne Metal Enterprises, Ltd. v. McPhee, 9 Cir., 382 F.2d 541, 546, the rule is otherwise if the primary purpose of the design is functional. The configuration and appearance of many articles of manufacture, though dictated by functional requirements, are often pleasing to look at. However, if the resulting configuration proceeds primarily from the necessity of functional or mechanical requirements, it is not a valid design patent. See Bentley v. Sunset House Distrib. Corp., 9 Cir., 359 F.2d 140, 145; Bliss v. Gotham Indus., Inc., 9 Cir., 316 F.2d 848, 851.

The court, as shown in note 1 determined that the primary purpose of the Barofsky design is functional. Whether that is a correct determination and, in any event, whether such a determination could properly be made on a motion for summary judgment, are matters which will be inquired into at a later point in this opinion.

Barofsky argues, in effect, that even if some individual features of his design are primarily designed to serve a functional purpose, this is immaterial if the design, considered as a whole, is not functional. To predicate this functional test upon a consideration only of the individual features of the design, Barofsky contends, is "to break the fagot stick by stick," a process which Justice Holmes condemned in connection with a copyright infringement question. See Schlitz Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 29, 39 S.Ct. 401, 63 L. Ed. 822.

The basic question here is whether the complete design for which a patent has been obtained primarily serves a utilitarian purpose. Consideration of that question necessarily involves an analysis of the design as a whole. The only way to make such an analysis is to note the individual features and functions of the design, evaluate their relative importance, and observe how they each contribute to the over-all conception for which the patent has been issued. See Bentley, supra, 359 F.2d at 146.

Proceeding in this manner, it would not be proper to invalidate a design because one or more minor features primarily serve a utilitarian purpose. But invalidation is indicated if the individual features which are found to serve, primarily, a functional purpose may fairly be labeled as dominant, in the sense that they are chiefly relied upon as contributing to the over-all design the qualities of newness, originality, ornamentation and non-obviousness.

This principle is demonstrated by our decision in Payne Metal Enterprises, Ltd. v. McPhee, referred to above, involving the design for a liquor pourer. In determining whether the design was non-obvious, the trial court gave primary consideration to two features of the design, a "pinched-in" waistline at the point at which the so-called "skirt" joins the body of the apparatus, and the fact that the "skirt" flows freely away from the body. The trial court held that both of these features were non-obvious and that the patent was not invalid on any other ground. Reversing, we held that the skirt feature was obvious, and that the pinched-in waistline was dictated primarily by functional requirements.2

Barofsky argues that the district court erred in holding that each of the dominant features of the patent are primarily functional.

The dominant features of his patent are, as stated above, related to the doors which are hinged to the sides of the cabinet. Chief among these...

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