Majestic Elec. Development Co. v. Westinghouse Elec. & Mfg. Co.

• Decision Date: 03 October 1921
• Docket Number: 3618.,3616
• Citation: 276 F. 676
• Parties: MAJESTIC ELECTRIC DEVELOPMENT CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.
• Court: U.S. Court of Appeals — Ninth Circuit

276 F. 676

MAJESTIC ELECTRIC DEVELOPMENT CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.

Nos. 3616, 3618.

United States Court of Appeals, Ninth Circuit.

October 3, 1921

John H Miller, of San Francisco, Cal., for appellant.

Wesley G. Carr, of East Pittsburgh, Pa., and David L. Levy and Walter Shelton, both of San Francisco, Cal., for appellee.

Nathan Heard, of Boston, Mass., and Samuel Knight, of San Francisco Cal. (Knight, Boland, Hutchinson & Christin, of San Francisco, Cal., of counsel), amici curiae.

Before GILBERT and HUNT, Circuit Judges, and WOLVERTON, District judge.

WOLVERTON District Judge.

In these cases are involved the validity of two design patents numbered respectively 51,043 and 51,253, and, if valid whether infringed by the defendant's device. The first comprises a front and rear perspective view of plaintiff's Exhibit 2, in case No. 492, and Exhibit 5, in 544, as designated in the lower court; and the second, a front and side perspective view of plaintiff's Exhibit 2 in case No. 544. The first of these contains the annular flange as shown in the utility patent No. 1,245,084, produced in case No. 3617, (276 F. 682), which is at this time decided, but by separate opinion. Reference is made thereto for a more particular description of the patented device.

Let us inquire briefly respecting the legal terminology of design patents. The right to acquire such a patent is extended (section 9475, U.S. Comp. Stat. 1918) to 'any person who has invented any new, original, and ornamental design for an article of manufacture, not known or used by others in this country before his invention thereof, and not patented or described in any printed publication in this or any foreign country before his invention thereof. ' Generally speaking, the law relating to such patents does not materially differ from that which governs as to mechanical patents, and all the regulations and provisions which apply to the obtaining or protection of patents for inventions or discoveries are made applicable to patents for designs. Section 9481, Comp. Stat. As is said by the Supreme Court in Smith v. Whitman Saddle Company, 148 U.S. 674, 679, 13 Sup.Ct. 768, 37 L.Ed. 606, adopting the language of Mr. Justice Brown, while District Judge, in Northrup v. Adams, 12 O.G. 430, and 2 Ban. & A. 567, 568, Fed. Cas. No. 10,328:

'To entitle a party to the benefit of the act, in either case, there must be originality, and the exercise of the inventive faculty. In the one, there must be novelty and utility; in the other originality and beauty. Mere mechanical skill is insufficient. There must be something akin to genius-- an effort of the brain as well as the hand.'

It requires the exercise of inventive faculty equally in a design as in a utility patent to insure validity, and the test of invention is the same. Hammond v. Stockton Combined Harvester & Agr. Works, 70 F. 716, 17 C.C.A. 356; Myers v. Sternheim, 97 F. 625, 38 C.C.A. 345; Rose Mfg. Co. v. E.A. Whitehouse Mfg. Co. (D.C.) 201 F. 926 (affirmed 208 F. 564, 125 C.C.A. 566); Strause Gas & Iron Co. v. William M. Crane Co., 235 F. 126, 148 C.C.A. 620.

The very terms of the act and their implication render anticipation inimical to the validity of the patent, for the invention must be new, original, and ornamental, not known or used by others, and not patented or described in any printed publication. If so known, used, patented, or described, of course, there is anticipation. So that the rule of law respecting anticipation in utility patents must apply as well to design patents and with like effect. The result obtained must not only be new, as in utility patents, but it must be also original, that is, having its primary conception in the mind of the inventor; and, further, it must be ornamental. This means it must possess the elements of beauty and attractiveness; and in all this there must be invention of design, which reaches beyond the exercise of mere mechanical skill. H. D. Smith & Co. v. Peck, Stow & Wilcox Co. (C.C.A.) 262 F. 415.

The design which is the subject of patent appeals to the eye. The quest is for the beautiful and attractive, as well as the ornamental, and the test is the aesthetic effect. Bolte & Weyer Co. v. Knight Light Co., 180 F. 412, 103 C.C.A. 558.

'It must exhibit something which appeals to the aesthetic faculty of the observer. ' Rose Mfg. Co. v. E.A. Whitehouse Mfg. Co., supra.

Further in comparison, for the purpose of ascertaining and determining the sameness of effect upon the eye of the observer, the viewpoint of the expert is inapplicable. The test is the effect that the design produces visualized by the ordinary observer, 'giving such attention as a purchaser usually gives. ' Gorham Co. v. White, 14 Wall. 511, 528, 20 L.Ed. 731; Bolte & Weyer Co. v. Knight Light Co., supra.

The dry utility incident to a mechanical patent cannot be made the subject of a design patent. It is that utility which imparts a pleasing effect to the eye and appeals to the aesthetic emotions, to the sense of the beautiful, which is essential to the patentability of design. So that the attempt to patent a mechanical function under cover of a design would lead to a perversion of the purposes of the statute. Rowe v. Blodgett & Clapp Co., 112 F. 61, 50 C.C.A. 120; Marvel Co. v. Pearl et al. (C.C.) 114 F. 946; Weisgerber v. Clowney (C.C.) 131 F. 477.

Having adverted to the legal principles as thus ascertained, let us turn to the issues propounded. The design covered by patent 51,043 shows by its front perspective the wide marginal flange, the concavo-convex reflector, with the superadded element to provide for the dead air space, which does not change the appearance of the convex surface of the reflector, the heating unit disposed transversely to the reflector, the hood or wire cage, and the supporting pedestal; and by its rear perspective, the wide annular flange, the convex form of the reflector, the wire protector, and the pedestal. The defendant's utility has somewhat the same appearance, save the wide annular flange, and the heating unit, which is disposed axially with the reflector. Both are of copper, and the glow of each is practically the same. The patent, of course, does not show the glow, but the eye of the observer would catch it, and it affords an element for consideration respecting infringement.

Plaintiff's design is not without attractiveness and symmetry, nor altogether devoid of decorative merit. As a piece of furniture, it is attended with a bit of charm and elegance. We have not been advised of anything in the art that in resemblance is its exact prototype. But we are impressed that the defendant's device does not infringe, and this for the reason that the wide annular flange and the particular disposition of the heating unit are so characteristic of plaintiff's device as to differentiate it instantly, even by casual observance, from that of defendant. The test, as we have seen, is the impression made upon the ordinary observer, giving such attention to the object visualized as a purchaser usually gives. This means the exercise of intelligence, with a view to discrimination.

Some testimony has been offered in support of plaintiff's contention that the similarity is so complete as to produce a sameness of appearance.

Mrs. Labatt was familiar with the Majestic heater. While passing on the street, she saw a Westinghouse heater. It struck her that it was a Majestic, but she turned back and examined it more closely, and found it to be a Westinghouse. The thing that attracted her attention, and made her doubt that it was a Majestic, was what she thought to be a change in the element, alluding to the heating element. So it is apparent that one of the very features that most potently discriminate the one design from the other is what caught her eye and caused her to look more closely. As a purchaser, she would not have been deceived.

Hiller testifies he was shown two heaters of the Westinghouse type, by a man who mistook them for the Majestic, remarking, after some discussion, 'It looks very much like it. ' The witness proceeded:

'I showed him there was a slight difference in the element, and one thing and another, but in general appearance they were the same. I presume he purchased them on the strength of that.'

Witness tells of another instance where a person told him he had bought a Westinghouse supposing it to be a Majestic. The testimony is not assuring, for if such purchases had been made under mistake as to identity, the testimony of the purchasers themselves would have been the best evidence.

Wentworth gave his clerk orders to buy a heater, without telling him the kind wanted. One was brought in and set up, and witness paid no further attention to it until Hiller called his attention to the fact some time after that he had a Westinghouse heater.

Judge Coxe's allusion to the real test, 'Having seen the complainant's design in a show case or shop window, the ordinary buyer...