Gold Seal Importers v. Morris White Fashions, 108.

• Decision Date: 23 December 1941
• Docket Number: No. 108.,108.
• Citation: 124 F.2d 141
• Parties: GOLD SEAL IMPORTERS, Inc., v. MORRIS WHITE FASHIONS, Inc.
• Court: U.S. Court of Appeals — Second Circuit

124 F.2d 141 (1941)

GOLD SEAL IMPORTERS, Inc., v. MORRIS WHITE FASHIONS, Inc.

No. 108.

Circuit Court of Appeals, Second Circuit.

December 23, 1941.

Dean, Fairbank & Hirsch, of New York City (Morris Hirsch, of New York City, of counsel), for appellant.

Archibald Palmer, of New York City (Samuel Hassen, of New York City, of counsel), for appellee.

Before SWAN, CHASE, and FRANK, Circuit Judges.

SWAN, Circuit Judge.

This is a suit for infringement of a design patent, No. 125,540, issued on February 25, 1941 to Leo Friedman and by him assigned to the plaintiff. The design is for a lady's handbag. Upon motion for a preliminary injunction, the patent was held valid and infringed and the injunction was granted upon the plaintiff's posting a $5,000 bond. Thereafter the case came on for final hearing before another district judge, who held that a prior art bag, exhibit Z, was so similar in design as to invalidate the patent in suit or, at least, to require it to be so narrowly construed as to relieve the defendant from the charge of infringement. Gold Seal Importers v. Morris White Fashions, D.C., 38 F.Supp. 890. Accordingly the complaint was dismissed and the cause was referred for assessment of damages and costs incurred by the defendant by reason of the preliminary injunction. From this decree the plaintiff has appealed.

If the patent is valid, we have no doubt that the accused bag of the defendant infringes. The test of infringement is whether the two designs have substantially the same effect upon the eye of an ordinary observer who gives the matter such attention as purchasers usually give. Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 528, 20 L.Ed. 731; American Fabrics Co. v. Richmond Lace Works, 2 Cir., 24 F. 2d 365, 367. A comparison of the bags in question satisfies us that this test is met. Judge Leibell, who granted the preliminary injunction was clearly of this opinion, and Judge Galston, who presided at the final hearing, would have reached the same conclusion except for the limitations imposed by exhibit Z. He made findings that the outline of the defendant's bag follows the conformation of the patent in suit, as do the folds, and that the general appearance of the two bags is markedly similar, despite differences in the horizontal ornament and the handle of the zipper arrangement.

The patent contains no specifications of the design other than the accompanying drawings. These disclose a bag whose general contour is an oval with deeply indented ends. The front elevational view shows shirring or folds radiating from the center and interspaced by portions of an ornamental, horizontal, spiral rod which pierces each fold about midway between the upper and lower edges of the bag and serves to hold the folds in place; it gives the effect of appearing to twirl the folds toward the center and forms the central motif of the design. The mouth of the bag, concealed within the upper edge, is opened and closed by a zipper, of which only the handle is visible except in the top elevational view.

The bag of the patented design has a uniqueness of appearance and an aesthetic appeal not found in any prior patent or publication. But it is not enough for patentability to show that a design is novel, ornamental and pleasing in appearance. As this court has often said, particularly in recent years, "it must be the product of invention"; that is, the conception of the design must require some exceptional talent beyond the range of the ordinary designer familiar with the prior art. Nat Lewis Purses v. Carole Bags, 2 Cir., 83 F.2d 475, 476; Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715, 716; White v. Leanore Frocks, 2 Cir., 120 F.2d 113, 114. Such a standard is necessarily vague and difficult of...