Benchcraft, Inc. v. Broyhill Furniture Industries, Civ. A. No. WC 84-143-D-D.

• Decision Date: 14 March 1988
• Docket Number: Civ. A. No. WC 84-143-D-D.
• Citation: 681 F. Supp. 1190
• Parties: BENCHCRAFT, INC., Riverside Furniture Corp., and Hickory Hill Furniture Company, A/K/A Crestline Furniture Company, Plaintiffs, v. BROYHILL FURNITURE INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Northern District of Mississippi

681 F. Supp. 1190

BENCHCRAFT, INC., Riverside Furniture Corp., and Hickory Hill Furniture Company, A/K/A Crestline Furniture Company, Plaintiffs, v. BROYHILL FURNITURE INDUSTRIES, INC., Defendant.

Civ. A. No. WC 84-143-D-D.

United States District Court, N.D. Mississippi, W.D.

March 14, 1988.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Thomas D. Keenum, Sr., Booneville, Miss., N. Elton Dry, Pravel, Gambrell, Hewitt, Kimball & Krieger, Houston, Tex., Charles C. Garvey, Jr., Pravel, Gambrell, Hewitt, Kimball & Kreiger, New Orleans, La., Don A. Smith, Harper, Young, Smith & Maurras, Fort Smith, Ark., John W. Chestnut, Richard B. Hoffman, Tilton, Fallon, Lungmus & Chestnut, Chicago, Ill., for plaintiffs.

Floyd A. Gibson, Blas P. Arroyo, Bell, Seltzer, Park & Gibson, Charlotte, N.C., Dan W. Webb, Tupelo, Miss., for defendant.

MEMORANDUM OPINION

DAVIDSON, District Judge.

The three corporate plaintiffs in this action invoke the court's jurisdiction pursuant to 28 U.S.C. § 1338 and 28 U.S.C. §§ 2201 and 2202, and bring this action relating to a certain design patent issued by the United States Patent and Trademark Office. The plaintiffs challenge the validity of the subject patent and seek to have it declared invalid. The defendant has countersued, claiming patent infringement by the three plaintiffs.

Following entry of a pretrial order, this action was tried before the undersigned United States District Judge, sitting without a jury, in Oxford, Mississippi. Having considered the oral and documentary proof submitted at trial, the parties' pretrial memoranda, proposed findings of fact and conclusions of law, and supplementations thereto, the court now sets forth its findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).

FINDINGS OF FACT

I. BACKGROUND

A. The Parties

Plaintiff Benchcraft, Inc. ("Benchcraft") is a Delaware corporation having its principal place of business at Blue Mountain, Mississippi. Benchcraft's business involves the manufacture of upholstered furniture, including a suite or piece designated as style 4560. Plaintiff Riverside Furniture Corp. ("Riverside") is an Arkansas corporation, having a place of business at Fort Smith, Arkansas. Riverside also manufactures upholstered furniture, including a suite or piece designated as style 9553. Plaintiff Hickory Hill Furniture Company, a/k/a Crestline Furniture Company ("Crestline"), is a North Carolina corporation, having a place of business at Fulton, Mississippi. Crestline manufactures upholstered furniture, including a suite or piece designated as style 54737 and one designated as style 1201.

Benchcraft, Riverside and Crestline have continuously, since July 3, 1984, manufactured and sold the above-referenced styles of furniture. The three plaintiffs are each named as counter-defendants in the defendant's counterclaim.

Defendant/counterplaintiff Broyhill Furniture Industries, Inc. ("Broyhill"), is a North Carolina corporation, having its principal place of business at Lenoir, North Carolina. Broyhill is the owner of the patent in suit, United States Patent Des. No. 274,485. Broyhill manufactures both upholstered furniture and occasional furniture or "case goods" (end tables, coffee tables, bookcases), including a suite or piece designated as style 7663.

B. The Patent in Suit

This action relates to the validity of United States Patent No. Des. 274,485 (the '485 patent or the "patent in suit"). The application for the patent in suit was filed on May 19, 1983 and subsequently issued on July 3, 1984. Gary A. Huffstetler ("Huffstetler"), an employee of Broyhill, is the named inventor of the patent in suit (Plaintiff's Trial Exhibit 1 or "PTX-1"). Huffstetler assigned his rights in the patent to the defendant Broyhill.

The patent in suit discloses an ornamental design for a suite of upholstered furniture which is depicted in Figures 1 and 2 of the patent in the form of a sofa and loveseat. PTX-1. The claim of the patent is: "The ornamental design for a seat, as shown and described." PTX-1.

C. Origin of the Patent in Suit

This lawsuit and the patent had their genesis in certain acts which occurred in mid-1982. In May 1982, two corporate officials of Broyhill, namely its president Mr. Carl E. Gunter ("Gunter") and vice-president Mr. Ken Kepley ("Kepley"), made a trip to London, England to attend the Earls Court Furniture Show.

At this show, Gunter and Kepley observed a Victorian style furniture suite manufactured in Italy by a Mr. Zampa Bruno ("Zampa"). The suite, referred to as a "Venezia suite", was purchased by Mr. Joseph Alfred Spicer ("Spicer") of Ideal Furniture Co., Ltd., sometime in late 1980. Spicer testified by deposition that he displayed the piece at the Earls Court Show in 1982. Zampa testified by deposition that he had circulated photographs of the Venezia suite to prospective customers probably as early as 1977 or 1978, although he could not recall the exact date.

Mr. Gunter testified that when he first saw the Venezia suite he realized that it was not appropriate for the United States market. He was interested, however, in certain aspects of the Venezia piece, including the height of its back, the general shape of the back of the piece, and the "aesthetic flow" of the back, which "triggered an interest" on Gunter's part. Accordingly, Gunter photographed the Venezia suite with a Minox brand miniature camera which he often carried along with him to furniture shows.¹

In London, Gunter also instructed an employee of Broyhill, U.K., a marketing entity of Broyhill in England, to acquire a piece of the Venezia suite for shipment to Broyhill's United States plant. Gunter testified that he believed that certain features of the Venezia suite might be translated into a new upholstered furniture design that could be successfully marketed in the United States.

Immediately upon their return to Broyhill's plant in North Carolina, Gunter and Kepley met with Mr. Gary Huffstetler and Mr. Eric Stuenkel, both of whom were furniture designers employed in Broyhill's design department, to describe what they had seen at the Earls Court Show. Gunter testified that he informed Huffstetler that Gunter and Kepley had seen a product at the Earls Court Show which would be a desirable and probably successful product for Broyhill to begin manufacturing. Gunter and Kepley described the Venezia suite to Huffstetler and Stuenkel in general terms, relating to the shape and height of the Venezia sofa. They also meticulously pointed out such features as the outline of exposed wood on the back, the "T-cushions" on the seat, and used such phrases as "barrel back," "pub back", and "hand-tufted back" to recreate in words the back treatment on the Venezia sofa. After he and Kepley had described the Venezia sofa from memory, Gunter testified that he then suggested with some urgency that Huffstetler apply himself toward developing a design incorporating the features which had been described to him.

Huffstetler testified at trial that he had no idea in 1982 what was meant by the term "barrel back", but that he clearly understood that he was to produce a "version" of the sofa which had been described to him and Stuenkel by Gunter and Kepley. Huffstetler commenced immediately to create a design as requested and, as was his usual practice, made sketches of different parts of an upholstered sofa as he visualized how that part would appear in the finished design. Huffstetler and Stuenkel showed their preliminary sketches to both Gunter and Kepley, who critiqued their efforts and suggested changes. These unsatisfactory early sketches were later discarded by Huffstetler and Stuenkel.

Huffstetler and Stuenkel continued their design efforts while the Gunter photographs were away in New York for developing. Both Gunter and Huffstetler tetified that Huffstetler's design was essentially complete before the Gunter photographs were returned from New York and seen for the first time by Huffstetler. However, before he saw the photographs, Huffstetler had not been able to complete a sketch which Gunter or Kepley found totally satisfactory.² Rather, Huffstetler testified that he used the Gunter photographs to verify or clarify his earlier rough sketches, especially some problems with the wings on his piece "drooping" and not being as "crisp" as Kepley desired them to be. Huffstetler testified that he added from the photographs a nail trim around the exposed wood stub panels on the arms of his sofa and two rows of thirteen buttons, identical in number to those seen on the Venezia sofa. PTX-5.

Huffstetler showed his completed sketch, PTX-4, to Kepley, who indicated that Huffstetler had finally captured the essence of the piece desired by Gunter and had in fact "hit it on the nose."³ Huffstetler's completed design sketch was next rendered by Stuenkel into a full-sized engineering frame drawing which was sent to Broyhill's sample shop for the construction of a sample. Huffstetler's original design, designated by Broyhill as Model No. H-40, was a somewhat formal piece of furniture having tufts in the kidney roll and a plain or straight skirt with box pleats. The piece also had a dark wood trim and was covered in a heavy jacquard fabric. When the sample was delivered from Broyhill's sample shop on July 30, 1982, the Model H-40 sofa piece was assigned Style No. 7503 ("the 7503") by Broyhill. The 7503 was first offered for sale in the fall of 1982 in the traditional category.

Mr. Larry Waggoner, a regional sales manager for Broyhill in 1982, testified at trial that he and other sales personnel were dissatisfied with the look of the 7503 sofa. Waggoner was of the opinion that the piece was too formal and the jacquard fabric application raised the price beyond Broyhill's usual price range. Thus, Waggoner, Kepley and Gunter suggested that a "country" version of the 7503 be developed, since the country look was at that time and presently continues...