Balaban v. Polyfoto Corporation

• Decision Date: 26 September 1942
• Docket Number: No. 15.,15.
• Citation: 47 F. Supp. 472
• Parties: BALABAN et al. v. POLYFOTO CORPORATION.
• Court: U.S. District Court — District of Delaware

47 F. Supp. 472

BALABAN et al. v. POLYFOTO CORPORATION.

No. 15.

District Court, D. Delaware.

September 26, 1942.

COPYRIGHT MATERIAL OMITTED

Lawrence Bristol (of Watson, Bristol, Johnson & Leavenworth), of New York City, and J. Rankin Davis, of Wilmington, Del., for plaintiff.

Samuel E. Darby, Jr. (of Darby & Darby) of New York City, and E. Ennalls Berl, of Wilmington, Del., for defendant.

JONES, Circuit Judge, specially assigned.

The plaintiffs sue for alleged patent infringement and the defendant answers setting up (1) patent invalidity, (2) noninfringement and (3) file wrapper estoppel. From the evidence adduced at trial, we make the following

Findings of Fact.

1. Alexander Balaban, one of the plaintiffs, is the owner of the patent in suit, No. 2,083,215, issued to him June 8, 1937, for a "photographic diffusing device for enlarging and projection printing".

2. The other plaintiff, Robert B. Wheelan, is the owner of license rights under the Balaban patent, exclusive in the field of operating photographic portrait studios in department stores. Wheelan has owned and operated, beginning some ten years prior to 1937, under the name Wheelan Studios, a chain of photographic portrait studios located in various department stores in different cities with a central laboratory at New York City. The pictures are taken at the studios and the negatives are developed and the prints made at the central laboratory.

3. Wheelan obtained his rights under the Balaban patent in July, 1937, and proceeded to apply the Balaban disclosure to his commercial operations.

4. The defendant, Polyfoto Corporation, is a corporation of the State of Delaware. It was organized for the purpose of operating and commenced the operation of a photographic portrait business about May, 1937, with studios in department stores and a central laboratory at Bridgeport, Connecticut. The defendant adopted the particular character of practice charged to infringe in the middle of 1938.

5. In the photographic art prior to Balaban there were two general types of printing, viz., contact printing and projection or enlargement printing. The patent in suit is concerned with the latter.

6. In contact printing the negative is in contact with or so close to the sensitized print paper that the ultimate picture is of the same size as the negative, and the print is characterized by the same clarity of detail, or lack of it, as was in the negative.

7. In projection or enlargement printing the sensitized print paper is located some distance from the negative, the arrangement being, in order, a light source, the negative spaced therefrom with the emulsion or image bearing surface located away from the light source, a lens system, and then the sensitized print paper. The extent of enlargement is dependent upon the lens adjustment and the distance between the lens and the print paper, the greater the distance the greater the enlargement, about two feet being a typical distance in operation.

8. The physics and chemistry of photography tend to emphasize wrinkles and blemishes. To counteract this and also to render the subject of a portrait print more pleasing to the sight, it had been common practice many years prior to Balaban's development of the invention of the patent in suit to resort to what was known as "retouching". The common procedure in this respect was to add darkening material as by lead pencil to areas on the negative, so that light thrown toward the sensitized paper in printing was correspondingly held back at the treated lines or areas, and the final print made lighter at those points. It was also common procedure to make enlarged prints from retouched negatives by all-over diffusion in an effort to reduce the effect of undesired markings. Such all-over diffusion produced prints in which the eyes and other features were rendered hazy and indistinct and lost their appearance of "sparkle". Retouching of prints was also resorted to by adding darkening material to light areas and removing material from dark areas of the prints as by etching, necessitating subsequent coating of the prints with lacquer to conceal the retouching.

9. Such retouching methods had the disadvantages of being tedious and requiring peculiar skill, and in general resulted in the loss of the rounded modeling effect of features, the dulling or loss of delicate lines and of clarity in such important areas as the eyes, mouth, nostrils, hair and clothing of the image of the subject, — a condition which was aggravated in the case of the less skilled retouchers. Defects in a negative are necessarily emphasized and exaggerated in an enlarged print therefrom.

10. The Balaban patent discloses and claims a successful practical solution of the difficulties encountered in "retouching". In accordance with the teachings of the patent, in the projection printing of portrait negatives, a selective diffusing mask is placed adjacent to the image bearing side of the negative on the side opposite to the light source. The mask is selectively treated so as to have areas which are clear registering in respect of the parts of the negative desired to be printed sharply, such as the eyes, mouth, nostrils, hair and clothing, and other areas which are translucent and serve to diffuse the image rays passing there-through. The diffusing surface of the mask is located an appreciable distance from the image bearing surface of the negative. In a case where the mask is directly on the surface of a transparent glass supporting plate, the thickness of the glass plate may serve to provide the desired spacing; greater or less spacing may be accomplished by using glass of different thicknesses or by introducing a small air space. In general the greater the distance between the diffusion mask surface and the image surface of the negative, the greater the diffusion of the parts registering with the translucent areas.

11. The Balaban patent describes, by way of example, two specific ways of producing the selective diffusion mask, viz.: (1) providing transparent sheet material, such as glass or film, with a surface having translucent areas by applying thereto at the desired areas a suitable substance such as fats, oils, waxes, soaps or the like; and (2) providing transparent sheet material, such as glass or film, having a ground or frosty translucent surface, and rendering desired areas of the ground surface clear or transparent by some appropriate method, as by applying thereto a suitable substance such as balsam fir, turpentine, varnishes, oils or many other materials. The same end result as to the diffusing element and the ultimate photographic print is reached by either procedure.

12. Following the Balaban disclosure results in a simple device for and procedure of making enlarged prints of greatly improved quality having a sharpness and clarity of detail and tone in selected areas, such as the eyes, mouth, nostrils, hair and clothing, and a smooth, soft, satiny or velvety appearance over other larger areas such as the forehead, cheeks, chin and neck, with a retention of modeling and depth of dimension, and in general an over-all effect of brilliance and character with an elimination of marks due to grain and blemishes in the negative. The attainment of such results is limited to projection printing. The invention cannot be effectively practiced in contact printing.

13. Defendant at its inception had obtained rights under a camera patent owned by Polyfoto Internationale, Ltd., operating in England and Denmark. As part of the agreement defendant received technical data as to methods of printing comprising the most advanced type known and used by that company.

14. Defendant's practice from inception until about early summer of 1938, in accordance with the data supplied by Polyfoto Internationale, Ltd., was to do the retouching directly on the enlarged print. This comprised in the main etching away with a knife some of the deposited silver of the print to create a lighter appearance on the print at that point, and filling in lighter areas of the print with crayon material. After this the print was coated with a lacquer to cover up the evidence of the retouching. Diffusion was commonly employed also in exposing the print, the diffusion being by means of a uniform diffusing disk which gave a general all-over diffusion with a consequent loss of sharpness and detail.

15. Plaintiff Wheelan, subsequent to issuance of the Balaban patent on June 8, 1937, and after he had acquired his license of the patent, wrote Mr. Lester H. White, president of defendant company, on August 11, 1937, suggesting that Mr. White send him an untouched negative from which he would make some prints to demonstrate results attainable with a new process. Mr. White accepted the offer, sending Mr. Wheelan a negative bearing 48 miniature size poses and asking that Mr. Wheelan supply prints in 5" × 7" and 8" × 10" sizes of a designated pose. Mr. Wheelan sent him on August 13, 1937, two each such prints made in accordance with the Balaban patent disclosure.

16. Defendant's complete operations include the purchasing of plain transparent glass and treating (such as grinding) one surface thereof so as to render it translucent all over and subsequently clarifying selected areas, where sharpness of definition is desired, by the use of a crayon of waxy material which renders the area transparent. This glass plate provides about the right spacing between the image bearing side of a negative and the translucent-transparent mask surface for use of the Balaban invention in making enlarged prints.

17. The composition of the waxy crayon used by the defendant is asserted to be a secret and the subject of a pending patent application by one P. J. Berggren. The crayon, when applied to the translucent surface of the ground glass, renders transparent the area to which it is applied. Defendant concedes that it follows the "Type 2" procedure described in the...