Laskowitz v. Marie Designer, Inc.
| Decision Date | 23 February 1954 |
| Docket Number | No. 15315.,15315. |
| Court | U.S. District Court — Southern District of California |
| Parties | LASKOWITZ et al. v. MARIE DESIGNER, Inc. et al. |
COPYRIGHT MATERIAL OMITTED
Terry & Cohn, by Robert B. Terry and W. D. Dubail, St. Louis, Mo., Mason & Graham, by Collins Mason, William R. Graham, Los Angeles, Cal., for plaintiff.
Melvin E. Fink, Paul Gordon, J. Calvin Brown, Los Angeles, Cal., for defendants.
The plaintiff, Joseph F. Laskowitz, is the owner of the patent for an ornamental design for a chair issued on February 14, 1950, on an application filed August 15, 1947. Plaintiff corporation, Contour Chair-Lounge Co., Inc., the exclusive licensee and manufacturer under the letters patent, is a Missouri corporation, incorporated on April 1, 1946, with its legal place of business in the City of St. Louis, Missouri.
The defendant corporation, Marie-Designer, Inc., is a California corporation consisting of the individual defendants Victor E. Le Doux and Marie A. Le Doux. In 1947, "Contour" granted to the individual defendants exclusive distributing rights in the Western States to the "Contour Chair-Lounge", which is the subject of the patent.
By a contract dated April 9, 1949, the distributing rights of the individual defendants were extended throughout the United States and Marie-Designer, Inc., was incorporated as a California corporation to carry on distribution. A new contract was entered into between Contour and Marie Designer on August 25, 1952. This contract and all the defendants' rights under it were terminated on December 31, 1952.
Chairs embodying the patented design in the amount of some six million dollars were sold and some $800,000 was spent in national advertising. The plaintiffs shared in the expenditure, indirectly, by adjusting their prices to the sole distributor to absorb the expenditure.
The present action was instituted on March 23, 1953. It charges patent and trade-mark and trade-name infringement and unfair competition, and seeks injunction and damages.
The defendants have denied infringement, have challenged the validity of the patent and, in a counterclaim, seek to recover damages for infringement of copyrighted advertising material by the plaintiffs after the severance of their relationship.
After a hearing, a temporary injunction was issued. An appeal from it is now pending.
The cause has been tried on the merits and submitted.
At the core of the entire controversy is the design patent. And it is well to discuss briefly the nature of design patents in order to dispose of the contention of invalidity.
Patents for designs are covered specifically by statute.1 The requirements which have been in the law since 1842,2 are that the design be new, original and ornamental. The Supreme Court, in interpreting the Act of 1842, which used only the words "new and original", laid down certain fundamental tests which the courts have followed to the present day.
In stating the object of the statute the Court said:
3
Significant of the importance of the judicial thinking embodied in the decision just referred to is the fact that it included the "decorative" (i. e. ornamental) character of the design in its requirements for patentability. So when the subsequent reenactment of the section added the latter word it merely made the statutory law conform to the court-made law already in existence. The case just cited dealt with the question of infringement only; the criteria established were used later on to determine patentability. And cases old and new agree that the test is visual. Patentability exists if the design looked at as a whole (le tout ensemble) gives a pleasing impression.4 Of course, the result must come from the exercise of the inventive faculty.5 If these elements are present it is not material that the design may embody a regrouping of familiar forms and decorations.6
In determining whether a patent design is infringed, the test is, ultimately, the eye test. That is, do the two look alike to the ordinary observer? The Court of Appeals for the Second Circuit has stated the problem in this manner:
"The test of infringement is whether the two designs have substantially the same effect upon the eye — not the eye of an expert, but the eye of the ordinary observer, giving such attention to the matter as purchasers usually give."7
And even where the patented design is limited to the form shown in a drawing, any significant differences in configuration and general appearance, as they present themselves to the average buyer of the article on inspection, will be sufficient to avoid infringement.8 Or as the Supreme Court has put it, the true test of identity of design "must be sameness of appearance".9 And the identity of appearance is determined by "sameness of effect upon the eye".10
Tested by these rules, we are satisfied that there is invention in the design.
While infringement is denied, no attempt was made by the defendants to show any dissimilarity between the two chairs. Indeed, judging by testimony attempted to be elicited as to the difference in methods of operation and function, I am of the view that the defendants actually thought that the departures in the manner of construction of the chairs were so significant as to avoid infringement. But differences in function and in methods of attaining the function, important though they might be in a different type of patent, have no significance in a design patent.
The design is not described in the patent. The claim reads "the ornamental design for the chair substantially as shown". (See, Patent in suit) If
we apply the visual test no distinction can be seen between the patented and accused chairs, as an examination of the photographs of plaintiffs' chair and the infringing chair shows clearly. (See photographs attached.)
We have, in both instances, a chair shaped to conform to the contour of the human body, with two arms and four supporting legs. The only difference in appearance is that in the defendants' chair, the arm supports are solid while in the patented chair they are skeletoned. The arm supports in the accused chair can be turned outward so that one may slide into the chair from the side of it. In the patented chair the arms are stationary. This difference is one of function. It does not produce a substantial difference in appearance. And, as we are dealing with a design patent only, such slight deviation is not sufficient to avoid infringment.
In their attack on the validity of the patent the defendants have cited as references several American, one English and five French patents. All the patents except five American patents involve various types of chair construction, — each is a patent for a chair per se, not for the design. The five French patents (No. 25,764, July 17, 1921; No. 25,765, July 27, 1921; No. 25,786, September 27, 1921; No. 25,818, December 10, 1921; No. 548,425, January 1, 1921) are, in reality, one patent. The four lower in number and later in date are merely additions to the patent, No. 584,425. They all show a reclining chair and mechanical means for tilting the chair into a desired position. The patent is designated as
If "the eye" test is applied to the pictures showing the various angles of inclination which can be secured, there is no identity between them and the patent in suit. The American patents, other than the design patents, are:
6,594 Liniken July 17, 1849
102,498 Close May 3, 1870
131,419 Black September 17, 1872
149,804 Stewart April 14, 1874
182,950 Nichols, October 3, 1876
et al
246,556 Reich August 30, 1881
421,392 Dossett February 18, 1890
476,474 Moir June 7, 1892
581,888 Stoemer May 4, 1897
650,448 Beebe May 29, 1900
683,907 Brown October 8, 1901
823,841 Boyd June 19, 1906
941,919 Greilick November 30, 1909
1,430,248 Morse September 26, 1922
1,543,612 Pascaud June 23, 1925
1,872,056 Bielecky August 16, 1932
2,135,657 Debski January 31, 1933
2,281,209 Smith April 28, 1942
The earliest in point of time,...
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