Glen Raven Knitting Mills v. Sanson Hosiery Mills

• Decision Date: 11 May 1951
• Docket Number: No. 6218.,6218.
• Citation: 189 F.2d 845
• Parties: GLEN RAVEN KNITTING MILLS, Inc. v. SANSON HOSIERY MILLS, Inc. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

189 F.2d 845 (1951)

GLEN RAVEN KNITTING MILLS, Inc. v. SANSON HOSIERY MILLS, Inc. et al.

No. 6218.

United States Court of Appeals, Fourth Circuit.

Argued April 6, 1951.

Decided May 11, 1951.

Joseph G. Denny, Jr., Philadelphia, Pa. (Thornton H. Brooks, L. P. McLendon, and Brooks, McLendon, Brim & Holderness all of Greensboro, N. C., on the brief) for appellant.

Henry N. Paul, Jr., Philadelphia, Pa. (Robert B. Frailey, Philadelphia, Pa., Julius C. Smith, Armistead W. Sapp, Greensboro, N. C., Paul & Paul, Philadelphia, Pa., and Smith, Sapp, Moore & Smith, Greensboro, N. C., on the brief) for appellees.

Before PARKER, SOPER and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

This is a suit for infringement of a design patent for an ornamental design on women's hosiery. The defense challenges the validity, denies infringement and alleges non-enforceability of the patent because of abuse of the monopoly. The evidence shows that the contentions of noninfringement and abuse of monopoly are utterly lacking in merit; the trial court so held; and we shall confine ourselves chiefly in this appeal to the question of validity which was also decided below in favor of the plaintiff.

The patent in suit, U. S. Patent No. Des. 151,732, is one of two patents issued on November 16, 1948 to William G. Bley, the inventor, and Richard C. Spurgeon, an assignee of the invention and the patent application. Bley and Spurgeon, trading as partners, later assigned one-half interest in the patent to Sanson Hosiery Mills, Inc., and these are the parties plaintiff before us. The owners of the patent have granted various licenses under it, one to Spurgeon Hosiery Corporation, another to Vo-Jul Textiles, Inc., and another to Cressida, Inc. The Sanson Hosiery Mills manufactures stockings under trade marks "Picturesque" and "Picture Frame". Spurgeon Hosiery Corporation, one of the aforesaid licensees, uses the mark "Dupliquette".

In January, 1949 Sanson publicly exhibited its stockings with the patented design at a hosiery exhibition in New York which was attended by the Vice-President of Glen Raven Knitting Mills, Inc. Sanson alleges that later in the same month it mailed notice to approximately 650 full-fashioned hosiery manufacturers, including the defendant Glen Raven, of its rights under the patent. Glen Raven, who denies receipt of any such notice, began making the infringing stocking in May, 1949 at the request of a customer, and this suit was brought in September.

Since 1870, as is evidenced by the fact that 180 of 409 patents relating to design for hosiery related to the heel and foot-sole area, numerous inventor-designers have attempted to beautify the heel and foot area of the lady's stocking. They did so by varying the contours of the opaque heel and foot reinforcements and by the use of "clocks" — woven, knitted, or embroidered ornaments — bordering the opaque reinforced areas. The efforts of these designers have met with no substantial success of a permanent nature although there is some evidence that contrasting color heels and "clocks" bordering variously shaped heels were popular during the 1928-1930 period.

At the close of the Second World War when goods began to reappear on the store counters in abundance, stockings were no exception and resort to novelties was an obvious expedient to increase sales. In 1947 Bley conceived of the idea of framing the reinforcement of the heel, sole and toe without changing its conventional contour. The frame or border was knitted in by using the standard Pointex attachment of the knitting machine to control the movements of the carrier rods so that the steps in the frame line would be the same as the steps in the outline of the reinforcement. The resultant frame or border, of the same thickness as the reinforcement, parallels the marginal contour of the reinforcement and resembles a picture frame — hence the trade mark "Picture Frame" used by Sanson. Design patent No. 151,733 covers only a framing of the heel, whereas No. 151,732 here in issue, extends to the framing of the entire heel and cradle of the stocking.

Notwithstanding defendant's contentions to the contrary, it is plain that Bley's new stocking was immediately accepted by the public. Spurgeon Hosiery Corporation, which was a small company of twenty employees in March, 1948, took a license under the patent and rapidly expanded to four times its size. Its sales jumped from 10,000 dozen pairs at the end of 1948 to 26,000 dozen pairs at the end of 1949. In a leading store in Philadelphia, sales of "Dupliquette" constituted 65% of the entire sales even though competing brands were made by seven of the largest and most prominent manufacturers of full-fashioned hosiery. It is significant too that sales continued to jump despite the fact that the retail prices were higher than the price of comparable quality hose.

Sanson began the manufacture of the patented stocking in January, 1949. Previously it had sold high quality branded stockings under the name of Artcraft Hosiery Company but had found it so unprofitable that it sold its name to another company and changed over to the unbranded line, reducing its customer accounts from 500 to 15 or 20, and eliminating its sales force entirely. Embarking upon the sale of branded hosiery again when it became part owner of the Bley patent, Sanson first offered the new stocking in December, 1948. Within sixteen months Sanson's new customer accounts increased from 11 to 3,981 and in the first year its sales rose from 3,000 dozen pairs a month to 48,000 dozen pairs a month. By the end of 1949 its product was to be found in all of the forty-eight states, in the territories and possessions of this country, and in twenty-six foreign countries. At the time of trial, Sanson's yearly business, exclusive of royalties under the patent, was estimated at $10,000,000.

The popularity of the stocking is further attested by the acceptance of licenses by other manufacturers and especially by the numerous efforts of other manufacturers to imitate or copy the Bley design. Thirty-eight photographs on exhibit show unabashed attempts to copy, and most of them do not display even an attempt to introduce a subtle variation to the design. In the numerous suits brought by the plaintiffs to enforce their patent, over twenty consent decrees have been signed by different defendants who admitted the validity of the patent and the infringement.

The complete lack of merit in the defense of non-infringement is shown by a comparison of the patented design (on the left) with the design used by the defendant (on the right) as illustrated by the following pictures:

COPYRIGHT MATERIAL OMITTED

The defendant attacks the validity of the patent on grounds of anticipation, lack of invention, a design within the expected skill of the calling, public use, lack of patentable subject matter, insufficiency of disclosure and indefiniteness of claim. Offering thirteen mechanical patents and six design patents in evidence, in addition to numerous advertisements and publications, the defendant shows that the reinforcement area and a border along it in women's stockings were old, that it had long been known and disclosed in prior patents how to place a border or frame line parallel to the reinforcement area, and that it was within the powers of an ordinary designer of hosiery and an experienced knitter as a matter of course to make the required adjustments to a machine to produce a border. The defendant contends that the test of invention for a design patent is the same as that required for a mechanical patent and that the patentee failed to make any inventive contribution in view of the disclosures of the prior art.

The patents in closest support of the defendant's position are Schletter patent No. 1,531,349, Phillips patent No. Des. 76,495, Hemmerich patent No. 2,338,075, Nissen patent No. Des. 66,253, and Nebel patent No. Des. 73,620.

The Nebel design is closest in approaching that of Bley in that it involves in part a border spaced from and paralleling the contour of the heel reinforcement; however, the design, taken as a whole, is distinctly different in appearance. In Nebel the heel reinforcement rises vertically from the footsole, then it tapers off only to widen and taper again to form a diamond shaped figure atop a tapered heel. Beginning at the point where the heel reinforcement first tapers, a border of the same fabric as the reinforcement and spaced uniformly from it, follows the contour of the taper and the diamond shape and then forms a cross when opposite the apex of the heel reinforcement.

Statutes have protected design patents since 1842. Act Aug. 29, 1842, 5 Stat. 543. The present Act, passed in 1902, 32 Stat. 193, 35 U.S.C.A. § 73, authorizes the issuance of a design patent to "Any person who has invented any new, original, and ornamental design for an article of manufacture". Cases have construed these statutes until today the law of design patents is well crystalized and the chief difficulty lies in applying the law to the facts. In Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731, the court construed the 1842 Act which read "invented or produced any new and original design." The court said: 14 Wall. at pages XXX-XXX-XXX, 20 L.Ed. 731. "The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that, not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts. * * * And the thing invented or produced for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may...