Airolite Co. v. Fiedler

• Decision Date: 31 January 1945
• Docket Number: No. 155.,155.
• Parties: AIROLITE CO. et al. v. FIEDLER.
• Court: U.S. Court of Appeals — Second Circuit

147 F.2d 496 (1945)

AIROLITE CO. et al. v. FIEDLER.

No. 155.

Circuit Court of Appeals, Second Circuit.

January 31, 1945.

Frederick P. Warfield, of New York City (G. H. Braddock, of Minneapolis, Minn., of counsel), for plaintiffs-appellees.

Gluck & Breitenfeld, of New York City (Frederick Breitenfeld, of New York City, of counsel), for defendant.

Before CHASE, CLARK, and FRANK, Circuit Judges.

CHASE, Circuit Judge.

The plaintiffs, The Ventilouvre Company, Inc., a Connecticut corporation, being the wholly owned subsidiary and sales agent of The Airolite Company, an Ohio Corporation, sued the defendant, a resident of New York, for unfair competition and for the infringement of U. S. Pat. No. 1,722,059 which was granted on July 23, 1929, to Andrew L. Riker for a ventilator and which is now owned by The Airolite Company.

The defendant answered by denying both unfair competition and patent infringement and added a counterclaim for a declaratory judgment holding the patent invalid. The patent claims were held not infringed and the complaint and counterclaim were dismissed. The defendant was held to have competed unfairly with the plaintiffs by placing in his catalogue drawings of ventilators called herein Plans 502, 503 and 527 and was perpetually enjoined from so doing or in any way using them as a sales or advertising medium. All the parties appealed.

Unfair Competition.

The plaintiffs make and sell ventilators in varying sizes as desired by their customers. They are frames fitted with louvers which usually may be adjusted to permit the passage through them of more or less air while preventing the passage of light. Such ventilators are often used in doors to take the place of transoms, though that is only one instance of their widespread use. The plaintiffs have been supplying such ventilators for use in hotels, hospitals, homes, theatres, ships, office and factory buildings, and other structures since 1926 and have built up a sizeable business. Since the decided expansion of the navy following the outbreak of the war they have been consulted by naval officers and architects in regard to the designing of suitable ventilators, some with stationary and some with adjustable louvers, which have been adopted by the navy and which they have supplied for use in naval vessels of the United States. The defendant makes and sells similar and also identical ventilators, having become a manufacturer of them following a period of acting only as an agent for the sale of ventilators made by others.

The circumstances which led to the bringing of this suit may be stated as follows: The plaintiffs prepared and submitted to the navy drawings of ventilators which the navy put into its own specifications for vessels to be built for it. The Ingalls Shipbuilding Corporation, having contracted to build certain naval vessels equipped with the ventilators of three of the drawings made by the plaintiffs, purchased the ventilators of the defendant who then included in his own catalogue what are called in the record Plans 502, 503, and 527 which are drawings accurately depicting the ventilators thus supplied. The use of such drawings by the defendant in its own catalogue is the act of unfair competition found and enjoined by the trial court. That action was taken on the basis of findings which are now quoted in full in so far as they relate in any way to the subject of unfair competition.

"2. The defendant appropriated and published in his catalogue three plans of the plaintiffs which he found in Navy specifications. He recognized that the work in the shipyards was Navy work. The uncontradicted evidence of the plaintiff shows and I find as a fact that the form and certain characteristics of the plans marked them as the plaintiffs' and that the trade would recognize them as originating with either of the plaintiffs who are both well known in the trade. I further find that plaintiffs' contribution of the plan to the United States Navy was for the specific purpose of war and was not intended to and did not constitute a relinquishment of its rights thereto and therein.

"3. Whether or not the defendant, at the time of his appropriation of the plans, had reason to know that they were the work of the draftsmen of both or either of the plaintiffs, he knows it now and, as indicated by his defense and his testimony, he intends to insist on publishing the plans in his catalog. This will constitute a continuing tort which the Court will enjoin. Although not more than nominal damage to date has been cogently or satisfactorily proved, the probability of the damage in the future appears and is found as a fact.

"4. The defendant deliberately appropriated plans which he knew were designed and originated by someone else. Even though he might have manufactured the article, if and when its manufacture was proposed to him, the reckless appropriation by him of another's plan and design as an advertising medium was a wrong to that other. He indulged himself in ingenious constructions of the interrogatories and, although he admitted on the stand that he knew their purpose, he served answers that were disingenuous and misleading. These acts, coupled with the manner and matter of his testimony, constitutes unclean hands."

Had these drawings of the plaintiffs so "appropriated" been copyrighted we will assume, arguendo, that their use by the defendant would have been a legal wrong to the plaintiffs but that kind of a tort has not been proved since there was no copyright. What then could be the legal wrong to the plaintiffs if the defendant did publish their uncopyrighted plans in his own catalogue to show to prospective customers the details of ventilators he was willing and able to supply to them? They were ventilators anyone was free to make or sell, and having the lawful right to do that the defendant was likewise free to show them by drawings or otherwise in his catalogue or elsewhere. The plaintiffs have not been legally wronged by the defendant's use of drawings which he had as much right to use as they did even though his drawings are exact copies of their own. James Heddon's Sons v. Millsite Steel & Wire Works, 6 Cir., 128 F.2d 6.

Moreover, there was nothing about these drawings to indicate the plaintiffs as the...