Zangerle & Peterson Co. v. Venice Furn. Novelty Mfg. Co.

• Decision Date: 26 January 1943
• Docket Number: No. 8044.,8044.
• Parties: ZANGERLE & PETERSON CO. v. VENICE FURNITURE NOVELTY MFG. CO.
• Court: U.S. Court of Appeals — Seventh Circuit

133 F.2d 266 (1943)

ZANGERLE & PETERSON CO. v. VENICE FURNITURE NOVELTY MFG. CO.

No. 8044.

Circuit Court of Appeals, Seventh Circuit.

January 26, 1943.

COPYRIGHT MATERIAL OMITTED

J. Bernhard Thiess and Bertram Wm. Coltman, both of Chicago, Ill., for appellant.

Bernard A. Schroeder, Samuel A. Karlin, and George A. Chritton, all of Chicago, Ill., for appellee.

Before EVANS, MAJOR, and MINTON, Circuit Judges.

MINTON, Circuit Judge.

This is a suit to enjoin the infringement of a patent and to recover damages therefor; and in the alternative, for the same relief for alleged unfair competition. The trial court found the patent invalid and the charges as to unfair competition not sustained, and dismissed the complaint. The plaintiff appeals.

The first question we are required to decide is as to the validity of the patent. If the patent is valid, infringement is admitted.

The patent No. 126,548 was issued April 8, 1941, to John W. Wilson on his application filed February 4, 1941, and the plaintiff is now the owner thereof. The term of the patent is for three and one-half years, and covers a design for a lamp table known in the plaintiff's line of merchandise as No. 510. In the application for the patent, the applicant amended the dominant features clause therein to read: "The dominant features of the design comprise a table provided with a top having rolled ends, the sides below the top having lower edges that converge toward the rolled ends beginning at a medial point, there being curved legs that extend downwardly from said top which are provided with carved motifs at their upper ends."

The Patent Office called attention to Furniture Age, a trade publication, of February 1940, and a table which the plaintiff was then manufacturing, and advertising and offering for sale in this publication. This was a cocktail table, No. 456. The Patent Office rejected the application on February 18, 1941 for the following reason: "The design is lacking in patentable invention as it involves a mere modification of the top and legs of the tall table along the lines clearly taught in the low table of the publication reference."

The Patent Office also recommended that the dominant features clause be eliminated. On March 6, 1941, applicant amended his application by cancelling out the dominant features clause, and raised the question that although the issue of Furniture Age in question was the February 1940 issue, the date of this issue was not conclusive proof that it was actually published more than a year before the filing date of the application, February 4, 1941.¹

The Patent Office responded with a copy of Furniture Age of January 1940 with the same advertisement in it, and again advised the elimination of the dominant features clause, stating:

"The present `dominent (sic) features' clause should accordingly be canceled or amended so as to confine it to a new feature or features which distinguish it in an ornamental sense from the cited art. * * *

"As presented, the design is lacking in patentable invention as it involves a mere modification of the top and legs of the tall table along the lines clearly brought out in the low table of the January, 1940 `Furniture Age' publication reference."

The Patent Office had overlooked the applicant's amendment of March 6, 1941, eliminating the dominant features clause, but it nevertheless pointed out the unpatentability of the design. The Patent Office, after having had called to its attention the elimination of the dominant features clause, granted the patent.

If the application with the statement of the dominant features of the design in it spelled unpatentability because they read upon a design that was public property, it is difficult for us to understand how the striking out of the statement of the dominant features makes it patentable. It is apparent that the dominant features, the essence of the design of lamp table No. 510, read squarely upon and are the dominant features of cocktail table No. 456. In other words, lamp table No. 510 is cocktail table No. 456 with a shorter, narrower top and longer legs, and with a shelf about half-way between the top and the floor. Nothing is claimed for the shelf, and could not be, as it is as old as the type of table itself.

Was this "invention"? We think not. Design patents, like mechanical patents, must show originality and the exercise of inventive faculty. It is not sufficient to take old designs or forms and adapt them to new purposes. As we said in Howell Co. v. Royal Metal Mfg. Co., 7 Cir., 93 F. 2d 112, 113:

"To entitle a party to the benefit of the statute, 35 U.S.C.A. § 31, the device must not only be new, but inventively new. The readaptation of old devices or forms, however convenient, useful, or beautiful they may be in their new roles, is not invention. Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S.Ct. 768, 37 L.Ed. 606.

"We are of the opinion that the present case comes within the rule thus announced, and that plaintiff's particular redesign or recreation exhibited no invention. In view of the prior art, only the ordinary skill of a designer of chairs was necessary, in order to achieve the design of the patent."

Again, in S. Dresner & Son, Inc., v. Doppelt et al., 7 Cir., 120 F.2d 50, 51, we stated: "By the terms of the present Act patentable design for an article of manufacture must be characterized by an invention of a new, original and ornamental design. The mere production of such a design is not sufficient. The word `produced' which appeared in the earlier enactments has disappeared from the present Act, and there is no authority to substitute it for the word `invented,' and thereby qualify the usual concept of invention. However, the words `invented' and `new' and `original' must be construed together in applying the usual rule that there must be an exercise of inventive genius, which precludes the grant of patent monopoly upon the exercise of mere skill of an ordinary designer who is chargeable with knowledge of the prior art."

The plaintiff did not invent the design of the lamp table No. 510. It produced it from the prior art design of cocktail table No. 456. The reducing of the size of the table, lengthening the legs and putting in the shelf were the exercise of the mere skill of an ordinary designer in the trade. The ideas were old and at hand; the skilled designer had only to use them. The use made of them in the instant case did not introduce a new creation. The trial court properly held that the patent was invalid.

This brings us to a consideration of the second phase of the case: Was there unfair competition? The defendant frankly admits it copied the plaintiff's table. If the plaintiff never...