Bliss v. Gotham Industries, Inc.

• Decision Date: 21 March 1963
• Docket Number: No. 17795.,17795.
• Citation: 316 F.2d 848
• Parties: Charles O. BLISS, Charles O. Bliss and Beatrice Bliss, general partners of Blisscraft of Hollywood, a limited partnership, Appellants, v. GOTHAM INDUSTRIES, INC. and Morris Gottsegen, Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

316 F.2d 848 (1963)

Charles O. BLISS, Charles O. Bliss and Beatrice Bliss, general partners of Blisscraft of Hollywood, a limited partnership, Appellants, v. GOTHAM INDUSTRIES, INC. and Morris Gottsegen, Appellees.

No. 17795.

United States Court of Appeals Ninth Circuit.

March 21, 1963.

Lyon & Lyon, Los Angeles, Cal., for appellants.

Harris, Kiech, Russell & Kern, and Donald C. Russell, Los Angeles, Cal., for appellee Gotham Industries, Inc.

Before BARNES and HAMLIN, Circuit Judges, and FOLEY, Senior District Judge.

ROGER T. FOLEY, Senior District Judge.

In this action for infringement of Bliss Design Patent D-174,793, covering a design for a pitcher, joined with a claim of unfair competition, plaintiffs, the appellants here, appeal from the judgment of the District Court for the Southern District of California, Central Division holding invalid and not infringed the said patent and further holding that neither of the appellees have competed unfairly with the appellants.

The District Court had jurisdiction of appellants' first claim or cause of action by virtue of Title 28 U.S.C.A. § 1338(a).

Judge Solomon, of the District Court of Oregon, sitting in the Southern District of New York, in Blisscraft of Hollywood v. United Plastic Company, 189 F.Supp. 333, 337, held that the patent under consideration here was invalid for want of invention and for lack of ornamental design. The Court of Appeals of the Second Circuit agreed. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694.

The following quotations from the opinion of the Court of Appeals of the Second Circuit in that case, p. 696 of 294 F.2d well express the views we have formed after consideration of the testimony and exhibits before us as to validity of Design Patent D-174,793:

"The essentials for the issuance of a design patent are stated in 35 U.S.C. § 171.¹ The design must not only be new, original and ornamental, it must also be the result of invention.

"Plaintiff\'s pitcher is made of polyethylene. Structurally it is cylindrical in shape, has circular horizontal ridges around the body at uniform intervals, and has a flange-like base. It has an H-shaped handle with finger indentations, a scalloped snap-on lid with an extended pouring spout, and a hinged cap attached to the lid which fits over the spout.

"1-4 Reference to the prior art discloses that plaintiff\'s pitcher is a combination of features of containers which were well known before plaintiff\'s production was begun. Of course, the mere fact that a person has utilized in combination a number of elements which severally were well known will not defeat the patentability of the combination. Graff, Washbourne & Dunn v. Webster, 2 Cir., 1912, 195 F. 522, 523. But the utilization of old elements in combination must represent an exercise of inventive skill and creative talent beyond that of the ordinary designer chargeable with knowledge of the prior art. International Silver Co. v. Pomerantz, 2 Cir., 1959, 271 F.2d 69, 71; General Time Instruments Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, 854, * * *. What plaintiff did amounted to nothing more than an unstartling regrouping of old elements which demonstrated no originality born of inventive faculty. This is not enough. Knickerbocker Plastic Co. v. Allied Molding Corp., 2 Cir., 1950, 184 F.2d 652, 655. It is not sufficient that plaintiff has shown the talent of an adapter; a manifestation of the art of the inventor was required. Blisscraft v. Rona Plastic Corp., D.C.S.D. N.Y.1954, 123 F.Supp. 552, affirmed 2 Cir., 1955, 219 F.2d 238. We agree with the district court that plaintiff\'s pitcher is lacking in the indispensable inventive ingredient. Plaintiff\'s commercial success in marketing its pitcher does not, without invention, make for patentability. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162; Toledo Pressed Steel Co. v. Standard Parts, Inc., 1939, 307 U.S. 350, 357, 59 S.Ct. 897, 83 L.Ed. 1334.

"5 Plaintiff\'s patent was invalid for another reason. To be patentable, a design, in addition to being new and inventive, must be ornamental. This means that it must be the product of aesthetic skill and artistic conception. Burgess Vibrocrafters, Inc. v. Atkins Industries, 7 Cir., 1953, 204 F.2d 311. Plaintiff\'s pitcher has no particularly aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. Its lid, body, handle and base retain merely their individual characteristics when used in conjunction with each other without producing any combined artistic effect. The reaction which the pitcher inspires is simply that of the usual, useful and not unattractive piece of kitchenware. The design fails to meet the ornamental prerequisite of the statute.

"While the issuance of the patent entitles it to a presumption of validity, this presumption is rebuttable. Here it must yield to the evidence of lack of invention and lack of ornamentation. The view which we take of the matter makes it unnecessary for us to consider whether the utilitarian or mechanical features of the pitcher were so dominant in the design conception as to prevent patentability. The issue of infringement is, of course, moot."

Appellants argue that the Trial Court erred in making its Conclusion of Law No. 4. The Conclusion of the Court is:

"Design Patent No. D-174,793 and the claim thereof are invalid and void, because the design was dictated primarily by functional or mechanical requirements and any ornamental or so-called pleasing effect was merely a by-product thereof."

They place considerable reliance upon Robert W. Brown & Co. v. DeBell, 9 Cir., 243 F.2d 200, on p. 202, and quote from the opinion by Judge Hamley, the following:

"Appellants make some contention that the Bessolo patent is invalid because it is primarily functional and utilitarian. This argument is based on the fact that the principal purpose of the design is to provide advertising space, and that the frame itself has the utilitarian purpose of holding a license plate.

"4 It is true that the purpose of Congress in authorizing the grant of design patents was to give encouragement to the decorative arts. Such patents contemplate not so much utility as appearance. Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731. But it does not follow from this that a design which comprehends a useful, in addition to a decorative, purpose cannot be the subject of a valid design patent. While it is the design which is patented, it is immaterial that the subject of the design may embody a functional or utilitarian purpose."

We agree that a design which comprehends a useful and decorative purpose can be the subject of a valid design patent. However, appellants' "Poly Pitcher" is not ornamental and does not appeal to the eye as a thing of beauty; does not relate more to appearance and to matters of ornament than to utility and does not appeal to the aesthetic emotion.

The Trial Court was correct in holding that Design Patent D-174,793 and the claim thereof are invalid and void because the design was dictated primarily by functional or mechanical requirements and any ornamental or so-called pleasing effect was merely a by-product thereof. The patent being invalid, the issue of infringement is moot. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 697. Once invalidity is established, it is unnecessary to consider the question of infringement. It was so held by this Court in Bergman v. Aluminum Lock Shingle Corp. of America, 251 F.2d 801, 804. There, Judge Lemmon, speaking for this Court, observed:

"There is a growing and pragmatical tendency among courts not to inquire into the alleged infringement of a patent once it has been found to be invalid.

"This trend probably has been encouraged by an observation in Sinclair & Carroll Co., Inc. v. Interchemical Corporation, 1945, 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L.Ed. 1644, where the Court said:

"`There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. Cases cited. It has come to be recognized, however, that of the two questions, validity has the greater public importance, * * *.\'

"Realizing that an invalid patent cannot be infringed, many Federal courts have correctly proceeded no further after finding a patent void.

"In J. R. Clark Company v. Murray Metal Products Company, 5 Cir., 1955, 219 F.2d 313, 318, the Court said:

"`Whether, assuming Claim 1\'s validity, appellant might be entitled to prevail on the closer issue of infringement, we think it unnecessary for us to decide. Expressly pretermitting any holding upon that issue, we prefer to predicate our decision on what appears to us more solid ground, i. e. the proven invalidity of the patent in suit, both as anticipated in fact by the prior art, and for its failure, as a matter of law, to disclose that degree of novelty now required in order to vest a patentee with the statutory monopoly which an enforceable patent grants. Cases cited.\'"

THE CLAIM FOR UNFAIR COMPETITION

Appellants' claim for unfair competition is set forth in what they denominate "Second Cause of Action for Unfair Competition." All of the allegations contained in appellants' so-called First Cause of Action are by reference adopted and made a part of the Second Cause of Action.

As to the second or unfair competition count in their attack upon the findings and conclusions of the Trial Judge, appellants assume and argue that California state law should be applied in the determination of the issues raised by their claim for unfair competition. If the District Court's jurisdiction of this claim for unfair competition were based upon diversity of citizenship, undoubtedly, California law would apply. The...