White v. Leanore Frocks, Inc.

• Decision Date: 04 June 1941
• Docket Number: No. 307.,307.
• Citation: 120 F.2d 113
• Parties: WHITE et al. v. LEANORE FROCKS, Inc.
• Court: U.S. Court of Appeals — Second Circuit

120 F.2d 113 (1941)

WHITE et al. v. LEANORE FROCKS, Inc.

No. 307.

Circuit Court of Appeals, Second Circuit.

June 4, 1941.

Charles Sonnenreich, of New York City, for appellants.

Max Nachamie, of New York City, for appellee.

Before L. HAND, CHASE, and FRANK, Circuit Judges.

PER CURIAM.

This is an appeal from an order denying a motion for an injunction against the infringement of two design patents for women's dresses. The patents issued on December 10 and December 17, 1940, and the motion was made on January 14, 1941; there had therefore been no chance for an adjudication upon them, or for any public acquiescence in them. On the other hand the defendant cited against them no prior art or prior use; its only evidence in defence being the following passage in an affidavit of its president; "no disinterested manufacturer in the City of New York would pretend that there is anything basically new or novel in the respective garments of the plaintiff." That allegation was obviously futile, and the case therefore came on without defence of any kind. The judge thought that nevertheless the validity of the patents was not clear enough to support a preliminary injunction, and denied the motion.

Courts have at times held design patents invalid upon their face without any showing of invalidity by the defendant. Boldt Co. v. Nivison-Weiskopf Co., 6 Cir., 194 F. 871; Boldt Co. v. Turner Bros. Co., 7 Cir., 199 F. 139; indeed we have done so ourselves. Denton v. Fulda, 2 Cir., 225 F. 537. But in the only instance in which the Supreme Court passed upon the question, it reversed a dismissal and sent back the case for trial, although the design was certainly extremely simple. New York Belting & Packing Co. v. New Jersey Rubber Co., 137 U.S. 445, 11 S.Ct. 193, 34 L.Ed. 741. And we have very definitely announced our disapproval of so disposing of such suits except in the clearest possible cases (Elishewitz & Sons Co., Inc. v. Bronston Bros. & Co., Inc., 2 Cir., 40 F.2d 434) just as we have in the case of mechanical patents. Dubilier Condenser Corp. v. New York Coil Co., 2 Cir., 20 F.2d 723; Frank v. Western Electric Co., 2 Cir., 24 F.2d 642. The validity of a design patent depends upon the same factors as that of a mechanical patent: the condition of the art when the design was made; how long the need had existed; how nearly the art had approached the new design and when; how far the design met with popular approval and displaced other designs when it appeared. Nat Lewis Purses, Inc. v. Carole Bags, Inc., 2 Cir., 83 F.2d 475; Neufeld-Furst & Co., Inc. v. Jay-Day Frocks, Inc., 2 Cir., 112 F.2d 715. A court can seldom inform itself of these elements well enough to declare that the patent must inevitably be invalid; the only safe course is to let the action go to trial. If therefore the order had included a dismissal of the complaint we should have reversed it.

The judge did not, however, hold the patents invalid; he merely said that their validity was not plain enough to support a temporary injunction, and in this he was clearly right. It is true that in infringement actions it does not inexorably follow that the patentee can have no...