Gorham Company v. White

• Citation: 81 U.S. 511,14 Wall. 511,20 L.Ed. 731
• Parties: GORHAM COMPANY v. WHITE
• Decision Date: 01 December 1871
• Court: United States Supreme Court

81 U.S. 511

20 L.Ed. 731

14 Wall. 511

GORHAM COMPANY v. WHITE.

December Term, 1871

ERROR to the Circuit Court for the Southern District of New York; the case being thus:

The Patent Act of August 29th, 1842,¹ enacts:

'That any citizen or citizens, &c., who by his, her, or their own industry, genius, efforts. and expense may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woollen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or bas relief, or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell, and vend the same or copies of the same to others, by them to

be made, used, and sold, may make application in writing to the Commissioner of Patents expressing such desire, and the commissioner on due proceedings had may grant a patent therefor. The duration of said patent shall be seven years.'

A subsequent act,² that of March 2d, 1861, re-enacts in substance the same things apparently, and makes some changes in the term of duration of the patent.

With these statutes in force, Gorham & Co., in July, 1861, obtained a patent for a new design for the handles of tablespoons and forks, which under the name of the 'cottage pattern' became extremely popular; the most successful plain pattern, indeed, that had been in the market for many years.³ The pattern is represented, further on, in the lefthand design on page 521. Gorham & Co. subsequently transferred their patent to the Gorham Manufacturing Company.

In the year 1867 one White obtained a patent for a design which he alleged to be original with him for the same things; the handles, namely, of forks and spoons; and in 1868 a patent for still another design. Both of his designs are shown on the page already mentioned, alongside of the cottage pattern and to its right hand on the page.

Manufacturing and selling quantities of spoons and forks of these last two patterns, White interfered largely with the interests of the Gorham Manufacturing Company, and that company accordingly filed a bill in the court below to enjoin his making and selling spoons and forks under either of his patents. The validity of the patent held by the Gorham Company was not denied, nor was it controverted that the defendant had sold spoons and forks which had upon them designs bearing some resemblance to the design described in the patent held by the company. But it was contended that none of the designs on these articles thus sold were substantially the same as the design covered by the patent held by the company, and that they were independent of anything secured by that patent. The sole question, therefore, was one of fact. Had there been an infringement? Were the designs used by the defendant substantially the same as that owned by the complainants?

Much testimony upon the question of infringement was taken; the complainant producing witnesses sworn to by Mr. Tiffany, of the well-known firm of jewellers and silver smiths in New York, as representative men 'in the trade under consideration, unexceptionable in every respect.'

Mr. Cook, of the firm of Tiffany & Co., said:

'I should say that the patterns are substantially like one another. I think that an ordinary purchaser would be likely to take one for the other.'

E. W. Sperry, a manufacturer of forks and spoons for thirty-seven years:

'I should say that the pattern of White of 1867 was certainly calculated to deceive any one but an expert. Any person seeing one of the Gorham spoons or forks at one end of the table, and one of White's at the other end, could not tell the difference between them; not one man in fifty.'

Martin Smith, of Detroit, a merchant jeweller, dealing for ten years in silver spoons and forks:

'In my judgment, if the White pattern were placed in a store different from that in which they had before seen the cottage pattern, seven out of ten customers who buy silverware, would consider it the same pattern.'

Theodore Starr, of the Brooklyn firm of Starr & Marcus, merchant jewellers, eight years in business:

'The essential features I consider the same. The resemblance is such as would mislead ordinary purchasers.'

H. H. Hayden, of New York, engaged for several years in manufacturing and selling metal goods:

'The two designs are substantially alike. In my opinion they would mislead, and would be considered one and the same pattern by the trade; by the trade, I mean customers as well as manufacturers.'

Alfred Brabrook, agent of Reed & Barton, manufacturers at Taunton, Massachusetts, of Britannia metal and German silver plated ware:

'In many cases the resemblance would mislead ordinary purchasers.'

J. T. Bailey, head of the house of Bailey & Co., large dealers in jewelry and silver at Philadelphia:

'I don't think that an ordinary observer would notice any difference on a casual observation. But, to a person skilled in this business, of course there are some small differences. I mean to say, that should an ordinary observer come into my store and take up the two spoons, he would not notice any difference in them, unless desired to examine them critically.'

H. D. Morse, of the house of Crosby, Morse & Foss, jew ellers and venders of silver in Boston, and whose department had been to a good extent designing:

'They are substantially the same thing so far as appearance goes; substantially alike in regard to general effect, with a slight difference in outline. An ordinary observer would see no difference between them.'

James A. Hayden, the selling agent of Holmes, Booth & Haydens, manufacturers of spoons in New York:

'The similarity is so strong that it would not be detected without an examination more careful than is usually made by purchasers of such goods.'

Mr. C. L. Tiffany, head of the house of Tiffany & Co., aged 55, and dealing in forks and spoons for more tnan twenty-five years:

'I have no hesitation in saying they are substantially alike. I think the resemblance would mislead ordinary purchasers; and being asked I certainly might myself be misled by it, if not beforehand told of the difference and my attention particularly called to it.'- Edward C. Moore, a member of the firm of Tiffany & Co., a designer:

'There is a substantial difference between the patterns, but the design of all is so nearly alike that ordinary purchasers would be led to mistake the one for the other. It seems to me that is what the pattern of White is made for.'

Newell Mason, carrying on jewelry business in Chicago and Milwaukee for twenty years at least:

'The patterns are substantially different, but ordinary purchasers, seeing them apart, would mistake one for the other. If the cottage pattern had acquired popularity in the market, White's would derive advantage from that fact.'

John Gleave, a die-sinker:

'Ordinary purchasers would be misled by the similarity between the cottage pattern and White's of 1867, but not on a second comparison. If an ordinary purchaser had not a sample of the cottage pattern before him, he would be apt to consider White's of 1867 to be the same with it.'

James Whitehouse, a designer in the employ of Tiffany & Co.:

'From my knowledge and experience in the business, I do not regard the designs of White as original, and think that they were suggested by the design of Gorham & Co.'

Morse, another of Tiffany & Co.'s designers:

'From my experience as a designer I should think that the designer of White's must have intended to imitate the effect in spirit of the provious design, and yet make a difference. If spoons and forks made after the cottage pattern had obtained a reputation and position in the trade, spoons and forks of White's pattern would find sale by reason of the popularity of the forks and spoons just mentioned. I should think they would be sold for the same thing.'

Mr. Henry B. Renwick, aged 52, residing in New York, whose principal occupation was the examination of machinery, inventions, and patents, and who during the last sixteen or seventeen years had frequently been examined as expert in the courts of the United States for various circuits:

'I have examined the spoons and forks made by White, and I have no doubt that they are in all respects substantially identical with the Gorham design. Respecting the design secured by White's patent of 1868, I have some little doubt, owing to the increased concavity of outline in the broad part or head of the handle; but still think the better opinion is that it is within the description and drawing of the Gorham patent.

'By the expressions 'substantially' like, I mean such an identity as would deceive me when going as a purchaser to ask for one spoon, if I should be shown another which was slightly different in minute points either of contour or ornamentation. In the present instance, if I had been shown the cottage patterns, at one end of a counter, and afterwards had been shown White's pattern of 1867, at the other end of the same counter, I should have taken both sets of exhibits to have been of the same design, and I did, in fact, take them so to be until I laid them side by side and compared them minutely.

'I do not think that every change either in contour or in ornamentation makes a substantial difference in the design. For instance,...