SS Kresge Co. v. Winget Kickernick Co., No. 10818-10820.

• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)
• Writing for the Court: STONE, SANBORN, and THOMAS, Circuit
• Citation: 96 F.2d 978
• Parties: S. S. KRESGE CO. et al. v. WINGET KICKERNICK CO. et al. J. C. PENNEY CO., Inc., et al. v. SAME. LA MODE GARMENT CO. v. SAME.
• Docket Number: No. 10818-10820.
• Decision Date: 16 May 1938

96 F.2d 978 (1938)

S. S. KRESGE CO. et al.
v.
WINGET KICKERNICK CO. et al.
J. C. PENNEY CO., Inc., et al.
v.
SAME.
LA MODE GARMENT CO.
v.
SAME.

Nos. 10818-10820.

Circuit Court of Appeals, Eighth Circuit.

May 16, 1938.

96 F.2d 979

COPYRIGHT MATERIAL OMITTED

96 F.2d 980

George I. Haight, of Chicago, Ill. (John J. Sexton, of St. Paul, Minn., and John A. Marzall, of Chicago, Ill., on the brief), for appellants

Frank A. Whiteley, of Minneapolis, Minn., for appellees.

Before STONE, SANBORN, and THOMAS, Circuit Judges.

STONE, Circuit Judge.

Mary D. Neilson was granted patent No. 1,389,067 covering "Undergarments for Women". She was also granted patent No. 1,680,267 which she thereafter surrendered upon Reissue No. 17,903 — this patent being for "Process of making garments for women and children." Thereafter, she gave an exclusive license to Winget Kickernick Company to make, use and sell under these patents. Also, the Winget company is owner of the registered trademark "Kickernick" as applicable to garments manufactured by it.

January 29, 1935, Mrs. Neilson and the Winget company filed a suit against S. S. Kresge Company and another suit against J. C. Penney Company, Incorporated. In each of these suits plaintiffs sought an injunction against infringement of the above patents and of the trademark and against unfair competition and for treble damages for wilful infringement and for damages for unfair competition. November 15, 1935, La Mode Garment Company (manufacturer of the garments sold by the defendants in the above two suits) brought suit, in the same court, seeking to enjoin further prosecution of the two above actions.

These three suits were consolidated for trial. In each of the infringement actions a decree was entered enjoining the defendant and the La Mode Garment Company from further infringement of the patents and the trademark, according recovery of profits and damages from them and referring determination of the amount of profits and damages to a special master. In the action brought by the La Mode Garment Company, a decree was entered dismissing for want of equity. Separate appeals were taken from these three decrees and the appeals consolidated and heard upon a single record.

We shall first examine and determine the issues concerning the patents and, thereafter, those concerning the trademark and unfair competition. We shall examine these patents separately.

Product Patent No. 1,389,067.

Patent No. 1,389,067 is a product patent. Claims 1, 2 and 5 are here involved. Those claims are as follows:

"1. A woman's undergarment comprising a back member having the central portion of the bottom edge concavely curved throughout its length, a front member having its center cut along a straight line a predetermined distance, and an insert sewed along one edge to the edges of said central cut and along another edge to the curved edge of the back member.

"2. A woman's undergarment comprising a back member having the central portion of the bottom edge concavely curved throughout its length, a front member having its center cut along a straight line a predetermined distance, and an elongated rectangular insert sewed along one longitudinal edge to the edges of the center cut and along another longitudinal edge to the curved edge of the back member.

* * * * * * * * * * * * * *

"5. An undergarment comprising a back member having side edges and a bottom edge formed with a straight portion extending from and angularly disposed in relation to each of said side edges and having a portion between the two straight portions concavely curved throughout its length, a

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front member having side edges connected with the side edges of the rear member and having increased width of material extending inwardly from the lower portion of the median line of said front member, said increased width of material having a continuous edge connected throughout its length with the curved edge only of the back member, whereby leg members of the garment are formed with crotch fullness extending directly back from the median line at the front of the crotch between said leg members."

Claims 1 and 2 cover a garment made up of three pieces which are a back member, a front member and an insert. The claims differ only in the respect that claim 2 describes the shape ("elongated rectangular") of the insert while claim 1 does not. Claim 5 covers a garment made up of two pieces: a front member and a back member.

Appellants challenge both the validity of the patent and infringement thereof, if valid. We think there was no infringement of the patent and, therefore, there is no necessity for determining validity. Our examination is limited to the scope of the patent in order to ascertain whether the accused garment is within that scope.

We have spent much time and effort in digesting this large record of more than eleven hundred pages and in examination and comparison of many physical exhibits. From this study, certain matters concerning this art, its development and its status at the time of this patent are clear.

The immediate art is women and girls' drawers and bloomers. A correlative art, close enough for citation here, is that of men's drawers and pants. The art has to do with particular garments covering the body from the waist down and more or less of the legs. It is an undergarment fitting next the body. The problems of the art have to do with the use of such garments. Bearing upon that use are the material used, the freedom of movement, the wear of the garment, economy in manufacture and styles of clothing.

At the time this record opens the history of the art, its status was as follows. The material was inelastic, such as muslin. This material came in bolts of flat cloth of regular widths. From such material, the drawers were cut in various number of pieces. Usually, there were four pieces (two back and two front) or two pieces (back and front or two side halves). Where there were four pieces there were seams on the outsides and insides of the legs and (where the crotch was not left open) from front waist center between the legs to back waist center. Where there were two pieces (back and front) the seams were on the outsides and insides of the legs or (where the two pieces were side halves) along the insides of the legs and from front to back waist lines through the crotch. Where the crotch was left open, the above seams terminated so as to have that result. Where the crotch was closed, the above constructions resulted in a V-shape at the crotch. Such garments lacked conformation to the body and more or less restricted body and leg movements. This restriction caused discomfort and also strain upon the garments, particularly at the seams which were the weak places. Only partial relief was obtained by having the crotch portion of the garment hang low and loosely.

The development from the above garments was directed along several lines as follows. One of these had as its prime purpose the strengthening of the garment at places of stress so as to give longer wear. There were two places of particular strain — caused by body and/or leg movements — these were across the seat and at the crotch. This strain manifested itself mainly at the seams which were usually the weaker places. Hence, this line of improvement took the forms of strengthening the seam by putting over it a reinforcing piece (Mandel patent No. 235,888 and Pearson No. 281,790, also see Loewenstein and Van Baalen No. 241,871) by inserts or gussets at the crotch or in relation to the seat (Howe No. 117,885, Evans No. 236,012, Loewenstein and Van Baalen No. 241,871, Bortree No. 250,131, Tracey No. 298,322, Ensminger No. 298,360, Gaston No. 317,334, Kneip No. 405,262, Lowe No. 430,532, West No. 453,874, Scriven No. 590,595, Scriven No. 690,195, in some patents this strengthening feature was incidental (Johnson No. 850,013, Page No. 1,069,073). Another was primarily directed to economy of manufacture, which manifested itself through efforts to economize in cloth by cutting along certain patterns and, also, to lessen the number of seams (Tracey No. 298,322, Erlanger No. 423,139, Lowe No. 430,532, Hamilton and Lewis No. 478,281, Corin No. 592,696, Lewis No. 621,353, Johnson No. 850,013, Wheeler No. 852,364). Another was primarily directed at appearance or style (Royce No. 553,739) or protection of other

96 F.2d 982

clothing (Prindall No. 1,102,800). Another was directed at comfort (Howe No. 117,885, Pearson No. 281,790, Tracey No. 298,322, Gaston No. 317,334, Kneip No. 405,262, Scriven No. 590,595, Morris No. 1,098,960, Clausen No. 1,198,108). Some of the above cited patents have had more than one purpose and the above arrangement of citation is merely illustrative. Other influences have been development of materials (such as elastics and knitted fabric) and styles of garments (such as union suits, abbreviated, closs-fitting dresses and use of bloomers as an exterior garment). While there have been various purposes guiding inventors and various influences bearing upon and changing the course of development of this art, each of them has made its contribution. The result is, that when Mrs. Neilson entered it, it was a somewhat developed and crowded art — all of the patents above cited are prior to her earliest patent, they extend from 1871 to 1916

Mrs. Neilson entered the patented art in 1916 with an application which passed to patent (No. 1,281,058) in 1918. This garment was an "undergarment" designed for use by women and girls. There were several forms — one was drawers and the others were body covering as well, the drawers feature being substantially the same in all. Her expressed main purpose was comfort. This she sought to secure by a garment which would "comfortably fit the body of the wearer in any position to avoid drawing or pulling, particularly at the crotch." These drawers were to be made from either three or four pieces of "inelastic material,...