Knickerbocker Plastic Co. v. Allied Molding Corp., 19

• Decision Date: 26 October 1950
• Docket Number: Dockets 21672,21673.,No. 19,20,19
• Parties: KNICKERBOCKER PLASTIC CO., Inc. v. ALLIED MOLDING CORP. KNICKERBOCKER PLASTIC CO., Inc. v. B. SHACKMAN & CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

184 F.2d 652 (1950)

KNICKERBOCKER PLASTIC CO., Inc. v. ALLIED MOLDING CORP.

KNICKERBOCKER PLASTIC CO., Inc. v. B. SHACKMAN & CO., Inc.

Nos. 19, 20, Dockets 21672, 21673.

United States Court of Appeals Second Circuit.

Argued October 5, 1950.

Decided October 26, 1950.

Charles Sonnenreich, of New York City (Arthur N. Seiff, of New York City, on the brief), for defendants-appellants.

Max Shlivek, of New York City (Shlivek & Brin and Saul S. Brin, all of New York City, on the brief), for plaintiff-appellee.

Before L. HAND, Chief Judge, and SWAN and CLARK, Circuit Judges.

CLARK, Circuit Judge.

On July 30, 1946, Design Letters Patent No. 145,344 were issued on a toy duck design to Constance Ray White, wife of the president of plaintiff-appellee Knickerbocker Plastic Co., Inc. Now the assignee of the patent, Knickerbocker thereunder manufactures in plastic large quantities of these ducks as children's playthings. Defendant Allied Molding Corp. manufactures similar ducks, which it purveys to defendant B. Shackman & Co., Inc., and others for resale.

In 1947, Knickerbocker, a California corporation, sued Allied, a New York corporation, in the Supreme Court of the State of New York, charging unfair competition in Allied's manufacture of the similar duck in question and asking for an injunction to stop it. Because of the diverse citizenship of the parties Allied removed the action to the United States District Court for the Southern District of New York. Plaintiff then amended its complaint to charge patent infringement as well, and additionally brought suit against Shackman in the same court on the same two charges. Both defendants denied infringement and unfair competition and counterclaimed for a declaratory judgment that the patent was invalid and void. By stipulations between the parties the two cases were tried together and were later consolidated for this appeal.

Upon trial, the District Court dismissed the first count, that for unfair competition, but on the patent issue found both infringement and validity. Defendants Allied and Shackman now appeal from an interlocutory order of November 28, 1949, which awarded plaintiff an accounting and enjoined the defendants from further manufacture, sale, and distribution of the offending ducks. Plaintiff took no appeal from the dismissal of the unfair competition count.

We think the judgment must be reversed because the patent is invalid.

We start here with a toy of pleasing design and attractive color and cost, made of the newly developed plastic material, and of undoubted commercial success. Is that enough? We must, however, come back to the originality of the design itself, for, however much the use of plastic may have contributed to this success, it concededly was not the invention of this plaintiff and is not claimed as a part of the design. As the District Court properly states: "Of course, the use of a plastic material, new in the toy field, in no way is one of the elements that would make this toy design patentable. It is not so claimed by plaintiff." The same is true of other contributing factors beyond the design.

Upon the sole issue, therefore, of the validity of the design, the pertinent statute, 35 U.S.C.A. § 73, grants protection only to a person who has "invented" a "new, original, and ornamental design for an article of manufacture." Hence as the Court of Customs and Patent Appeals has put it succinctly, In re Faustmann, 155 F.2d 388, 392, 33 C.C.P.A., Patents, 1065: "Thus it is seen that the authority for granting a design patent is based upon four propositions — the design must be new, original, ornamental, and must be the product of invention." The court added: "In mechanical patents a combination of old elements is not invention unless there is a new and unexpected coaction between the consolidated elements producing a new result not flowing from the individual characteristics of each of the elements. Now, in a design combination such as we have at bar, if coaction between the consolidated elements is to be regarded as necessary it must flow from a new, unexpected, ornamental and pleasing appearance brought about by the putting together of the old elements."

So our court has held that "a design patent must be the product of `invention,' by which we meant the same exceptional talent that is required for a mechanical patent." Nat Lewis Purses, Inc., v. Carole Bags, Inc., 2 Cir., 83...