Ashley v. Weeks-Numan Co.
| Decision Date | 12 January 1915 |
| Docket Number | 117. |
| Citation | 220 F. 899 |
| Parties | ASHLEY et al. v. WEEKS-NUMAN CO. |
| Court | U.S. Court of Appeals — Second Circuit |
On January 10, 1912, Frank M. Ashley granted, for an agreed royalty, to the Cushman & Denison Manufacturing Company, one of the complainants, the exclusive right and license to manufacture and sell throughout the entire United States and the territories thereof, during the full term of said letters patent, inkstands made in accordance with said design letters patent. Frank M. Ashley is, and ever since the issue of the patent has been, the owner of the patent in suit.
The complainants allege that the defendant is, within the county and state of New York, and without license from complainants unlawfully engaged in making, constructing, using, or vending to others to be used, inkstands made according to the said design letters patent. The defendant denies the validity of the patent and infringement.
Charles C. Gill, of New York City, for appellant.
Albert T. Scharps, of New York City, for appellees.
Before LACOMBE, WARD, and ROGERS, Circuit Judges.
The patent in suit in the specification states that the essence of the invention resides in the general form and relative proportions of the base and cover which presents to the eye an appearance of a low, comparatively wide construction having a very neat and artistic effect. The claim is for 'the ornamental design for an inkstand as shown and described.'
The drawing as explained in the specification is as follows:
(Image Omitted)
may be provided on the cover forming recesses C-- C to serve as a pen rack.'
The defendant's patent is design patent No. 41,846, issued on October, 17, 1911. It contains no written description of the invention, but merely states that reference is had to the accompanying drawing, in which is presented a perspective view of an inkstand embodying his design. His claim is for 'the ornamental design for an inkstand as shown. ' The accompanying drawing, which forms a part of the specification, is here reproduced:
(Image Omitted)
The specifications for the above patent are simply a reference to the drawing of the patent showing the inkstand in perspective.
The first question to be considered is as to the validity of the Ashley patent. The defendant denies its validity on several grounds:
1. That it does not constitute a new, original, and ornamental design, as required by law, as the proper subject for a design patent, but is for a mechanical function and apparatus, which, if patentable at all, should have been patented by a mechanical patent, or by a patent for a machine or apparatus, as distinguished from a patent for an ornamental design.
2. That in view of the state of the art at and prior to the time of the alleged invention the subject-matter of the patent is not legally patentable matter, invention, or discovery.
As respects the first objection, defendant calls attention to the fact that the exposure of the rear portion of the top of the body portion, when the cover of complainant's inkstand is in closed position, involves purely mechanical function. In the complainants' construction, if the rear portion of the base were not exposed when the cover is in closed position, the cover would extend beyond the base when in open position, and this result the patentee did not wish to take place, and therefore made the cover so that it does not reach quite back to the rear edge of the base when in its open position. Defendant argues that the exposed portion of the top of the base, when the cover is in closed position, does not and obviously could not form any part of an ornamental or artistic design. The flat surface is merely a flat support for the rear portion of the cover when the cover is in open position.
In reply to this contention of counsel we declare that the subject-matter of a patent is not rendered unfit as a design patent by the mere fact that it is possible somewhere in its construction to discover a mechanical function. A patentable design may consist of a new and ornamental shape given to an article of manufacture or of an ornamentation to be placed upon an article of old shape. The design law was intended to encourage the decorative arts, and therefore deals with the appearance, rather than the structure, uses, or functions, of the article. 30 Cyc. 827. In a design patent the appearance is the subject-matter of the patent, and the appearance is none the less patentable because a mechanical function is involved. The patentability of a design is determined by its appeal to the eyes, and not by the presence or absence of a mechanical function.
As respects the second objection, the defendant in its answer sets up 22 patents prior in date to the patent in suit, which it claims fully and clearly show and describe the invention or design of that patent, and have substantially the same arrangement, aggregation, or combination of parts, and produce the same function and effect. But the court below stated that:
'There is nothing in the prior art which approaches at all near to the patent, even if it be given the widest scope which words permit.'
We shall not enter into a detailed comparison of the patent in suit with the prior patents, but content ourselves with saying that we fully concur with the court below in its opinion that there is nothing in the prior art which impairs the validity of the Ashley patent. It is apparent that 'the general form and relative proportions of the base and cover, which present to the eye an appearance of a low comparatively wide, construction,' were new; nothing like them being disclosed in the prior patents. It may be that sliding covers were old, and that low, broad flat bases were not new, and yet the design of an inkstand having these elements may not be wanting in invention.
'The principle, as applied to design patents, is unassailable that whenever ingenuity is displayed in producing something new, which imparts to the eye a pleasing impression, even though it be the result of uniting old forms and parts, such production is a meritorious invention and entitled to protection. ' General Gaslight Co. v. Matchless Mfg. Co. (C.C.) 129 F. 137; Graff v. Webster, 195 F. 522, 115 C.C.A. 432.
This court has before said, and now repeats, that the fact that each separate element in a patented design was old does not negative invention, which may reside in the manner in which they are assembled, since it is the design as a whole, and the impression it makes on the eye, which must be considered.
As we have reached the conclusion that the patent in suit is valid, we are brought to inquire whether the defendant infringes. The appellant states the question of infringement is ordinarily to be determined by a mere inspection of the complainant's and defendant's stands, and that the impression of substantial identity of appearance must exist, if infringement is to be found. In this the appellant is in error. It is not a proper test to place the two inkstands side by side, to determine whether or not there are certain differences. On the contrary, the correct test is whether the ordinary observer, giving such attention as a purchaser usually gives, would purchase the defendant's inkstand believing it to be that of complainants'; and in applying that test it is necessary to observe that the subject-matter relates to form and configuration of which no one had ever seen the like prior to the patent in suit.
In Gorham v. White, 14 Wall. 511, 20 L.Ed. 731, the Supreme Court laid down the rule as follows:
...
To continue reading
Request your trial
-
Freeman v. Altvater
...on other grounds (C. C. A.) 18 F.(2d) 578; West v. Premier Register Table Co. (C. C. A. 1) 27 F.(2d) 653, 656; Ashley v. Weeks-Numan Co. (C. C. A. 2) 220 F. 899, 903; Frick Co. v. Lindsay (C. C. A. 4) 27 F.(2d) 59, 63; Skelton v. Baldwin Tool Works (C. C. A. 4) 58 F.(2d) 221, 227; Simplex W......
-
Kilgore Mfg. Co. v. Triumph Explosives
...There are, however, decisions to the contrary. Rollman Mfg. Co. v. Universal Hardware Co., D.C.Pa., 207 F. 97, 107; Ashley v. Weeks-Numan Co., 2 Cir., 220 F. 899, 904; Churchward International Steel Co. v. Bethlehem Steel Co., D.C.Pa., 262 F. 438, reversed on other grounds, 3 Cir., 268 F. 3......
-
THE UNIVERSITY OF ILLINOIS FOUND. v. Block Drug Co.
...of an interference hearing conclusive on non-infringement. Herman v. Youngstown Car Mfg. Co., 6 Cir., 191 F. 579, 586; Ashley v. Weeks-Numan Co., 2 Cir., 220 F. 899, 903. Also see Frick Co. v. Lindsay, 4 Cir., 27 F.2d 59, 63; West v. Premier Register Table Co., 1 Cir., 27 F.2d 653, The cour......
-
Flat Slab Patents Co. v. Turner
... ... contrary: One by District Judge Thompson in Rollman Mfg ... Co. v. Universal Hardware Works, 207 F. 97, and ... Ashley v. Weeks-Numan Co., 220 F. 899, 136 C.C.A ... 465 (Second Circuit); and in the latter case the rule was ... largely assumed rather than laid down ... ...