Hygienic Specialties Co. v. Salzman, Inc.

• Decision Date: 02 April 1962
• Docket Number: No. 249,Docket 27191.,249
• Citation: 302 F.2d 614
• Court: U.S. Court of Appeals — Second Circuit
• Parties: HYGIENIC SPECIALTIES CO., Plaintiff-Appellee, v. H. G. SALZMAN, INC., Hutzler Mfg. Co., and C. B. Cotton & Co., Inc., Defendants-Appellants.

302 F.2d 614 (1962)

HYGIENIC SPECIALTIES CO., Plaintiff-Appellee, v. H. G. SALZMAN, INC., Hutzler Mfg. Co., and C. B. Cotton & Co., Inc., Defendants-Appellants.

No. 249, Docket 27191.

United States Court of Appeals Second Circuit.

Argued March 6, 1962.

Decided April 2, 1962.

Joseph M. Fitzpatrick, New York City (Ward, Neal, Haselton, Orme & McElhannon, New York City, Joseph M. Fitzpatrick, John Thomas Cella, Alfred L. Haffner, Jr., New York City, on the brief), for appellants.

Harry Price, New York City, for appellee.

Before LUMBARD, Chief Judge, and KAUFMAN and MARSHALL, Circuit Judges.

KAUFMAN, Circuit Judge.

Hygienic Specialties, Inc. (Hygienic) brought suit against H. G. Salzman, Inc. (Salzman), Hutzler Mfg. Co. (Hutzler), and C. B. Cotton & Co., Inc. (Cotton), for alleged infringement of its design patent on a soap dish and infringement of the trademark "Hygienic." The complaint also alleged that Salzman and Hutzler had engaged in unfair competition.¹ The issues of design patent validity and infringement were submitted to a jury. It returned a verdict against Salzman and Hutzler but not against Cotton. Denying a motion by Salzman and Hutzler for judgment notwithstanding verdict, Judge MacMahon granted Hygienic's motion for judgment n. o. v. against Cotton. Subsequently, as trier of fact on the remaining counts of the complaint, the judge found Salzman and Hutzler guilty of unfair competition; however, he denied Hygienic's claim for trademark infringement.² The defendants appeal from the judgments against them, and Salzman and Hutzler ask review of the denial of their motion for judgment notwithstanding verdict.³

Hygienic was organized in 1947 to manufacture and sell a two-piece plastic soap dish on which it held a design patent.⁴ The unique feature of this soap dish was a latticed tray upon which a bar of soap could rest while excess water dripped into a receptacle below. The enterprise was modestly successful from the start. However, Hygienic did not "clean up" (the dish being, so to speak, a "wash out") until it engaged Salzman, a manufacturer's representative dealing in household items, as its exclusive sales agent for metropolitan New York, northern New Jersey, and the City of Philadelphia. In the five years that Salzman continued in this capacity (1949-1954), Hygienic's net earnings increased from $6,000. to $15,000.

One of Salzman's earliest customers for Hygienic's soap dish was Hutzler, a wholesaler who bought the dishes in bulk and resold them to retail outlets. Sometime between February and April of 1949 Hutzler initiated the practice of wrapping the soap dishes in individual translucent polyethylene bags. Affixed to these bags was a five inch cardboard label, folded in half. This label, or "saddle top" as it is called, was colored yellow, white, and blue. On one side there appeared inter alia the words "Hygienic 2 Piece Unbreakable Soap Dish"; on the other side was printed, "Made by Hutzler Mfg. Co., Long Island City, N. Y." There is no indication that Hygienic ever objected to this inscription. The soap dishes were produced in a variety of colors; and the words "Hygienic Soap Dish, U. S. Pat. No. 149066, Made in U. S. A." were molded on the bottom of each of them.

Early in 1954 Hutzler, negotiating directly with Hygienic, attempted to obtain the exclusive right to sell the Hygienic soap dish in this country, and alternatively, offered to buy all rights to the product. When these negotiations terminated without agreement in May, 1954, Hutzler continued to buy Hygienic's soap dishes from Salzman; but it also arranged to have Cotton begin manufacturing a new polyethylene soap dish bearing the Hutzler name. Hutzler then informed Salzman of these arrangements and Salzman agreed to distribute Hutzler's dish instead of Hygienic's. The Hygienic-Salzman sales agreement being terminable at will, Salzman, on November 17, 1954, informed the manufacturer that it no longer intended to handle Hygienic's product.

Thereafter Salzman sold Hutzler's soap dishes exclusively. Bearing the identification "Hutzler, Made in U. S. A.," these dishes were packaged in polyethylene bags with the Hygienic-Hutzler saddle top (which had been previously used) for approximately two months. Apparently these labels were "left over" stock. In any event, there is no evidence that Hygienic challenged this practice. Then, a new label made of heavy paper about 3½" long and colored yellow, white, and green was substituted. It was folded in half, and on one side was printed, "Sanitary, 2 Piece Unbreakable Polyethylene Soap Dish"; on the other side appeared "Made by Hutzler Mfg. Co., Long Island City, N. Y." The Hutzler-Salzman effort was successful, and before long more than a million Hutzler soap dishes were sold. Although Hygienic began to copy Hutzler's merchandising methods in early 1957,⁵ by this time it was unable to recapture a major portion of the expanded market for two-piece soap dishes. Its profits dropped substantially; and Hygienic brought the present action to recover damages.

Hygienic was required to comply with the provisions of 35 U.S.C. § 171 in order to obtain the monopoly benefits of our patent laws. The statute provides:

"Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

"The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided."

The courts have passed on the validity of countless design patents under this statute and its predecessors, and the law, in the abstract, has been restated many times.

The first requirement is that the design be the result of invention.⁶ Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 696 (2nd Cir. 1961); International Silver Co. v. Pomerantz, 271 F. 2d 69, 71 (2nd Cir. 1959). It must reveal a greater skill than "that exercised by the ordinary designer who is chargeable with knowledge of the prior art." General Time Instruments Corp. v. U. S. Time Corp., 165 F.2d 853, 854 (2nd Cir.), cert. denied, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770 (1948).

The degree of difference required to establish novelty is manifested when the average observer takes the new design for a different, and not a modified already existing design. Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., 226 F.2d 207, 212 (6th Cir. 1955).

Appellants produced evidence of design patents issued to a man named Price in 1910 and to H. P. Weaver in 1915 which, if considered together, feature almost all of the elements found in the Hygienic soap dish design "invented" more than a quarter of a century later, including two-piece construction and a square-holed tray. We think our language in Blisscraft of Hollywood v. United Plastics Co., supra, is equally appropriate here:

"Of course, the mere fact that a person has utilized in combination a number of elements which severally were well known will not defeat the patentability of the combination. Graff, Washbourne & Dunn v. Webster, 2 Cir., 1912, 195 F. 522, 523. But the utilization of old elements in combination must represent an exercise of inventive skill and creative talent beyond that of the ordinary designer chargeable with knowledge of the prior art. (Citations omitted.) What plaintiff did amounted to nothing more than an unstartling regrouping of old elements which demonstrated no originality born of inventive faculty. This is not enough. Knickerbocker Plastic Co. v. Allied Molding Corp., 2 Cir., 1950, 184 F.2d 652, 655. It is not sufficient that plaintiff has shown the talent of an adapter; a manifestation of the art of the inventor was required. Blisscraft v. Rona Plastic Corp., D.C.S.D.N.Y.1954, 123 F. Supp. 552, affirmed 2 Cir., 1955, 219 F.2d 238. * * *" 294 F.2d 696.

The fact that the design may be "new and pleasing enough to catch the trade" alone is not sufficient. Nat Lewis Purses, Inc. v. Carole Bags, Inc., 83 F.2d 475, 476 (C.C.A.2, 1936); Amerock Corp. v. Aubrey Hardware Mfg., Inc., 275 F.2d 346, 348 (7th Cir. 1960). Concededly, this concept of invention is an elusive one, especially when applied to elements of design.⁷ However, we are convinced that Hygienic's soap dish clearly does not meet the statutory test.

Furthermore, the Hygienic soap dish patent is invalid for another reason; it is not ornamental. In order to qualify for a patent a design "must be the product of aesthetic skill and artistic conception." Blisscraft of Hollywood v. United Plastics Co., supra; Burgess Vibrocrafters, Inc. v. Atkins Industries, Inc., 204 F.2d 311, 313 (7th Cir. 1953). The inventor of the soap dish design, Barnet D. Kaplan, admitted that the only design element not resulting from a mechanical function was a group of horizontal lines on the side of the dish.⁸ A design dictated solely by mechanical or functional requirements is not patentable, Hopkins v. Waco Products, Inc., 205 F.2d 221, 223 (7th Cir. 1953); Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 337 (S.D.N.Y.1960), aff'd, 294 F.2d 694 (2nd Cir. 1961), and Hygienic's soap dish, much like the Blisscraft pitcher,

"has no particular aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. * * * The reaction which it inspires is simply that of the usual, useful and not unattractive piece of kitchenware." 294 F.2d 696.

It is true that a presumption of validity attaches to the issuances of a patent; but this presumption is rebuttable. Blisscraft of Hollywood v. United Plastics Co., 2 Cir., 294 F.2d 696. In this case, for the reasons stated, we hold the design patent is invalid. Therefore, the trial court erred in refusing to enter a judgment notwithstanding verdict in favor of Salzman and Hutzler, and in granting Hygienic's motion for judgment n. o. v. against Cotton.

In view of this holding, we...