Grelle v. City of Eugene, Or.
| Decision Date | 15 February 1915 |
| Docket Number | 2456. |
| Citation | 221 F. 68 |
| Parties | GRELLE et al. v. CITY OF EUGENE, OR., et al. |
| Court | U.S. Court of Appeals — Ninth Circuit |
T. J Geisler, of Portland, Or., for appellants.
G. F Skipworth, of Eugene, Or., and John M. Pipes and Geo. A Pipes, both of Portland, Or., for appellees.
Before GILBERT, ROSS, and MORROW, Circuit Judges.
The plaintiff, Charles Edward Grelle, is the owner and holder of letters patent of the United States No. 43,338 for an ornamental design for a five-light lamp post. The plaintiff the Independent Foundry Company, of which Grelle is president, is engaged in the manufacture and sale of lamp posts designed in conformity with the patent issued to Grelle, under and by virtue of an exclusive license from Grelle. It is alleged in the bill that the city of Eugene Or., without the consent of the plaintiffs, and with full knowledge of the issuance to Grelle of the letters patent in suit, procured from the Gross Bros. Iron Works lamp posts the design of which infringed the design patent issued to Grelle; that the city of Eugene thereafter sold one of such lamp posts to the defendant Griggs, a resident of the city of Eugene, and caused the post so sold to be erected on the sidewalk in front of the premises owned by Griggs; that the city of Eugene has, without the consent of the plaintiffs, sold and erected other lamp posts which infringe the design patent owned and held by Grelle; that the city of Eugene, through its water board, is engaged in furnishing electricity for, and is lighting, maintaining, using, and operating such lamp posts, and is profiting by the use and operation thereof; that the defendant Griggs maintained and used the lamp post erected in front of his premises by the city of Eugene, with full knowledge that it was an infringement of the Grelle patent, and in violation of the rights of the plaintiffs in the premises.
The defendants in their answer to the bill set up the usual defenses in cases of this character: First, that the design patent which the plaintiffs claim to have been infringed is not the result of inventive genius, is not novel in any way, would not require the exercise of originality or inventive faculties in designing, was not patentable, and the patent issued to Grelle was therefore void; second, that the posts purchased and erected by the city of Eugene in no respect constituted an infringement of the Grelle patent. Each of these defenses is urged in this court.
1. There is a presumption, of course, in favor of the validity of a patent, and the task of proving its invalidity is imposed by the law upon the party so alleging. In the present case we are of opinion that the defendants have not sustained that burden. The record reveals testimony tending to show that the design of various parts of the Grelle lamp post-- the base, the column, and the arms-- was not new, and that similar designs had been in use for many years. But it appears from the testimony of the defendants' own experts that the combination of the various designs as disclosed by Grelle's post was new. This is the true test. That each separate element in a patented design was old does not negative invention, which may reside in the manner in which they are assembled, since it is the design as a whole, and the impression it makes on the eye, which must be considered. Graff, Washbourne & Dunn v. Webster, 195 F. 522, 115 C.C.A.
432; Gen. Gaslight Co. v. Matchless Mfg. Co. (C.C.) 129 F. 137; Bush & Lane Piano Co. v. Becker Bros. (D.C.) 209 F. 233.
2. The second defense interposed by the defendants-- that the lamp posts purchased and erected and operated by the city of Eugene do not infringe the design patent of Grelle-- presents a more difficult question. For the purpose of comparison, the posts in controversy are here inserted:
Plaintiffs' Post
(Image Omitted)
Defendants' Post
(Image Omitted)
For the purpose of this opinion we adopt the descriptions of the lamp posts as set forth in the opinion of the court below. Each consists of a base, a cylindrical column diminishing at the top, a shoulder or head from which four arms extend, and a single light with a globe at the top. The four arms extend from the head or shoulder at an angle of 45 degrees, more or less, and curve downward at the outer ends, from which the lamps with globes are suspended, so that the lamps with the extremities of the arms hang perpendicular. The base of the Grelle post is cylindrical and fluted, having a cap at the top, also cylindrical, upon which rests the column. At the base of the column above the cap is a mold for ornamental effect. At the top of the column is a cap, with molding underneath, upon which rests the shoulder or head, and on top of that is another cap, above which extends the single light. Both of the upper caps and the shoulder or head are cylindrical. The arms are also cylindrical and fluted, broadening at the base, and so shaped as to fit the shoulder. The base of the post purchased and erected by the city of Eugene is square in form, with paneling for ornamental appearance. At the top of this is a cap, which is also square, above which rests the column. It has a cap at the top of the column, as has the Grelle post; but this cap is square in form. The shoulder or head is also square, and the cap above that is square. The arms are square, with panel ornamentation, and the curves at the outer extremities drop a little more abruptly than those of the Grelle design.
Y. P. Hensill, a witness for the defendants, described the distinguishing features of the two posts as follows:
'The type 'S' post (the Grelle post) has a round base, with more moldings than the city's post. The type 'S' post has a fluted base; the city's post is square, with a square sunk panel. The type 'S' post is more ornate at the base of the shaft than the city's post. Both posts have fluted columns. Type 'S' post has a round cap or head. The city's post has a square, with sunk panels. The type 'S' post is ornamental. There is a difference in the shape of the arms. One is round-- the type 'S' post is round, increasing to elliptical, while the city post, the arms are square, with a square panel, or with a sunk panel shaped similar to the outline of the arm.'
The learned judge of the court below had before him a lamp post designed in conformity with the specifications of the Grelle design patent,...
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