Blisscraft v. Rona Plastic Corp.

• Decision Date: 22 June 1954
• Parties: BLISSCRAFT et al. v. RONA PLASTIC CORP.
• Court: U.S. District Court — Southern District of New York

123 F. Supp. 552

BLISSCRAFT et al. v. RONA PLASTIC CORP.

United States District Court, S. D. New York.

June 22, 1954.

Levisohn, Niner & Cohen, New York City, for plaintiffs.

H. C. Bierman, New York City, for defendants.

NOONAN, District Judge.

The above-entitled action was brought for alleged infringement of a design patent issued to Mr. C. O. Bliss and assigned to the other plaintiffs, covering a design for a butter dish. The defenses are non-infringement, and invalidity of the plaintiffs' patent. The grounds asserted for the invalidity of the patent are (1) lack of ornamental novelty, (2) lack of inventive idea, and (3) prior art.

The first Design Act, Act of Aug. 29, 1842, Chapter 263, 5 Stat. 543, provided for the granting of a patent to the originator of a "new and original" design, impression, ornament, pattern, print, picture, shape or configuration; the wording of subsequent statutes relating to design patents varied only slightly throughout the years, until 1902, 32 Stat. 193,¹ from which time the statutes provided protection for "new, original, and ornamental" designs.

That the design of the butter dish produced by the plaintiffs is "ornamental", as required, cannot seriously be disputed. That it has "ornamental novelty", was original, or involved the exercise of inventive faculties is not so clear.

As early as 1883, the following phrases were incorporated into its opinion by an interpreting court:

"It is now tolerably well settled that design patents stand on as high a plane as utility patents, and require as high a degree of exercise of the inventive or originative faculty.

"To entitle a party to the benefit of the act, in either case, there must be originality and the exercise of the inventive faculty. * * * There must be something akin to genius, — an effort of the brain as well as the hand."

Western Electric Mfg. Co. v. Odell, D.C., 18 F. 321, 322.

In 1921, the Circuit Court of Appeals, Second Circuit, adopted the above wording to the following effect in the case of Knapp v. Will & Baumer Co., 273 F. 380, 382:

"* * * design patents stand on as high a plane as utility patents and require as high a degree of exercise of the inventive or original faculty."

The court also held that making a candle square, instead of round, did not rise to the level of invention.

In 1930, Judge A. N. Hand, in holding a design patent invalid, in the case of A. C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99, stated:

"* * * But, whatever may be thought of the appeal to aesthetic taste, we are satisfied that there was no inventive skill in the slight modification of prior models involved in working out the design of the patent in suit."

A design patent is invalid unless it involves a step beyond the prior art and includes inventive genius. Alfred Bell & Co. v. Catalda Fine Arts, 2 Cir., 191 F.2d 99, 104.

The Second Circuit Court of Appeals in 1931, Berlinger v. Busch Jewelry Co., Inc., 48 F.2d 812, 813, stated:

"A design is not patentable merely because it can be distinguished in appearance from prior designs. Its creation must involve the exercise of inventive faculty."

See also General Electric Co. v. Parr Electric Co., 2 Cir., 98 F.2d 60; Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715; Gold Seal Importers v. Morris White Fashions, 2 Cir., 124 F.2d 141; Olympic Knitwear v. Fleetwood Sportwear, D.C., 39 F.Supp. 55.

One of the leading cases of this circuit which holds that a design patent must be the product of invention is Nat Lewis Purses v. Carole Bags, 83 F.2d 475, decided in 1936. In that case, the court referring back to earlier decisions, Steffens v. Steiner, 2 Cir., 232 F. 862; Strause Gas Iron Co. v. William M. Crane Co., 2 Cir., 235 F. 126; Whiting Mfg. Co. v. Alvin Silver Co., 2 Cir., 283 F. 75; American Fabrics Co. v. Richmond Lace Works, 2 Cir., 24 F.2d 365; and Berlinger v. Busch Jewelry Co., supra, said about "invention" 83 F.2d at page 476:

"* * * by which we meant the same exceptional talent that is required for a mechanical patent."

Invention is not supplied by minor differences. The design must be new as well. Novelty must be determined by the state of the prior art as well as other factors. N. Y. Belting & Packing Co. v. N. J. Car-Spring & Rubber Co., 137 U.S. 445, 11 S.Ct. 193, 34 L.Ed. 741.

Kanne & Bessant v. Eaglelet Metal Spinning Co., D.C., 54 F.2d 131, at pages 133 and 134, decided in 1931, in discussing recognition of novelty by the ordinary, intelligent observer said:

"In addition, the aesthetic taste of such an observer must recognize novelty; that is, that he has never seen the design before. A mere difference from anything he is familiar with is not sufficient. The impression created should be new and distinct from any previous mental photograph that the observer recalls. The mind must say to itself, `I have never seen that design before.'"

It seems obvious that the defendant in this action unabashedly and slavishly copied the plaintiffs' patented butter dish in its product marked plaintiffs' Exhibit 1 and as slightly altered by defendant in its product marked plainti...