Application of Yardley
| Decision Date | 28 March 1974 |
| Docket Number | Patent Appeal No. 9098. |
| Citation | 493 F.2d 1389 |
| Parties | Application of Richard Q. YARDLEY. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
David W. Brinkman, William T. Bullinger, Cushman, Darby & Cushman, Washington, D.C., attorneys of record, for appellant; Robert B. Murray, Jr., Washington, D.C., of counsel.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Jere W. Sears, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejections of the claim in appellant's application1 for an ornamental design for a watch. There are two rejections: (1) a rejection based on obviousness under 35 U.S.C. § 103, and (2) a rejection based on estoppel in view of prior copyright registrations. We reverse.
Appellant's design comprises a novelty watch face with a caricatured figure thereon. Extended arms and hands serve as the hour and minute hands of the watch. The drawing in the application is reproduced below.
The sole claim in the application is in the conventional form and it reads as follows:
The ornamental design for a watch as shown and described.
The first rejection is for obviousness under 35 U.S.C. § 103 in view of the single reference Breger, design patent D-82,245 issued October 14, 1930.
The prior art Breger design patent discloses a watch dial including hour numerals and a caricatured figure thereon. It states that the arms and hands of the figure are carried by the hour hand and the minute hand of the watch. The Breger design is reproduced below.
The examiner's rejection under 35 U.S.C. § 103 was affirmed by the board.
The second rejection is based on estoppel in view of appellant's prior copyright registrations. This rejection first appeared in the Examiner's Answer. The following passage therefrom explains the examiner's position:
Appellant has made of record as attachments to his Brief, copies of newspaper articles dealing with the subject matter of this application. Inspection of the photographs therein reveals that a copyright has been claimed on the subject matter disclosed. Further investigation has revealed the fact that three copyright registrations have in fact been secured on this subject matter, namely BB 37381, GP 67931 and GP 67932. In view thereof, and in view of the decision In re Blood (1928 CD 60; 57 App.D.C. 351 23 F.2d 772), the claim must be rejected on the principle that while the subject matter might be eligible for protection under either copyright or design patent, the obtaining of protection under one constitutes an election of protection, and there is an estoppel to seek the other. The Blood case followed the decision of De Jonge & Co. v. Breuker & Kessler Co. 3 Cir. (182 F. 150) which held in an apparent first impression case that the owner could not have protection under both the copyright and design patent acts. Cases dealing with the similar conflict which followed Blood are Jones Bros. Co. v. J.W. Underkoffler et al. D.C., 16 F.Supp. 729 (31 USPQ 197) and Taylor Instrument Cos. v. Fawley-Brost Co. 7 Cir., 139 F.2d 98 (59 USPQ 384). The Supreme Court in Mazer v. Stein (347 U.S. 201 74 S.Ct. 460, 98 L.Ed. 630; 100 USPQ 325) referred to the cases dealing with this conflict in a footnote to their denial of a ruling on the question, since they felt the issue was not before them. Accordingly, the claim is rejected on the principle of election of protection and estoppel to seek another.
The newspaper photographs referred to in the Examiner's Answer are reproduced below:
We note that the first newspaper photograph shows a drawing of a watch face including the words "SPIRO WATCH," the hour numerals, and the following printed matter: "© 1970 The Novelty Watch Co." and "Pat. pend." (near the numeral 6). The second newspaper photograph is similar to the first in these details.
The board affirmed this rejection. In support of the affirmance, the board's opinion cites and discusses the following twelve cases:
The board's opinion makes it clear that the affirmance was based on In re Blood, supra, and Ex parte Guild, supra. In addition, the board's opinion contains the following statement regarding the soundness of the rejection:
Aside from the clearly controlling effect of the cited cases, we are in agreement with the spirit of the stated rejection. The laws promulgated under Section 8 of Article I of the Constitution provide protection for the intellectual products of authors and inventors. The framers of the Constitution presumably recognized the difference between the endeavors of authors and inventors, because they used the word "respective" in reference to their "writings and discoveries." * * *OPINION
The board stated that representation of a human figure, real or caricatured, is subject to many obvious variations in facial, body, and dress characteristics. We agree with the board that facial, body, and dress characteristics may be made prominent and dominant in any particular choice, but we do not agree that it was obvious under 35 U.S.C. § 103 to derive appellant's specific design from that shown in the Breger design patent. While there may be a similarity in concept, it does not follow that there is a similarity in design or that appellant's design is necessarily obvious. The board's finding that it is quite evident that the scope of appellant's design may well approach the figure shown in Breger is unsupported and without merit. We do agree with the board that design patents issued to others should not be considered as a reason for the granting of a design patent on the appellant's application. The basic consideration in determining the patentability of designs over prior art is similarity of appearance. See In re Phillips, 315 F.2d 943, 50 CCPA 1223 (1963). We find no similarity of appearance between appellant's design and the Breger design other than that both relate to watch faces. We reverse the rejection based on 35 U.S.C. § 103.
The second ground of rejection, advanced in the Examiner's Answer and affirmed by the board, is that three copyright registrations have been secured on the subject matter of appellant's design, and that both copyright and design patent protection cannot be obtained for the same subject matter. The precise nature of the three copyright registrations is not shown in the record before us, but appellant does not deny that both copyright protection and design patent protection have been sought on the subject matter involved.
The only evidence of record indicating what was copyrighted by appellant's assignee is found in the newspaper photographs, above. Unfortunately, the quality of the reproduced newspaper photographs is poor, but a copyright notice (© 1970 The Novelty Watch Co.) appears on the drawing of the watch face. Furthermore, the watch face, as shown by the newspaper photographs, includes the hour numerals and some words. The latter features do not appear in the drawing of the instant design patent application.
Although copyright registrations of appellant's assignee are not of record, the Examiner's Answer, above, lists the registration numbers as: Bp 37381, Gp 67931 and Gp 67932. We take judicial notice of the following facts: that the prefix Bb indicates that the registration is for a contribution to a periodical manufactured in the United States of America (see Regulations of the Copyright Office, 37 CFR § 202.5; cf. 17 U.S.C. § 5(b)), and that the prefix Gp indicates that the registration is for a published work of art (see Regulations of the Copyright Office, 37 CFR § 202.10; cf. 17 U.S.C. § 5(g)). Based on the two Gp registrations and the newspaper photographs of record, we conclude that appellant's assigneee has registered a copyright for the drawing on the watch face (shown in the newspaper photographs) as a work of art under the authority of 17 U.S.C. § 5(g).
Turning now to the legal merits of the instant rejection based on estoppel in view of the prior copyright registrations, the rejection must be reversed.
We analyze the issue by asking two questions:
(1) Is there an area of overlap wherein a certain type of subject matter is both "statutory subject matter" under the copyright statute (meaning a type of subject matter which, by definition, may be copyrighted if the other statutory conditions and requirements are met) and "statutory subject matter" under the design patent statute (meaning a type of subject matter which, by definition, may be patented as a design if the other statutory conditions and requirements are met)?
(2) If the answer to question (1) is in the affirmative, and if a particular...
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