Whitman v. Walt Disney Productions, Inc.

• Decision Date: 27 December 1958
• Docket Number: No. 15608.,15608.
• Citation: 263 F.2d 229
• Parties: Vincent I. WHITMAN, Appellant, v. WALT DISNEY PRODUCTIONS, INC., a Corporation; Walter E. Disney, an Individual; John Doe One, et al., Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

263 F.2d 229 (1958)

Vincent I. WHITMAN, Appellant, v. WALT DISNEY PRODUCTIONS, INC., a Corporation; Walter E. Disney, an Individual; John Doe One, et al., Appellees.

No. 15608.

United States Court of Appeals Ninth Circuit.

December 27, 1958.

Boyken, Mohler & Wood, San Francisco, Cal., for appellant.

Lyon & Lyon, R. Douglas Lyon, Los Angeles, Cal., for appellee.

Before BARNES, HAMLEY and JERTBERG, Circuit Judges.

BARNES, Circuit Judge.

On March 30, 1937, there was issued to plaintiff United States Letters Patent No. 2,075,684. This invention was a composite system of photography and particularly a motion picture photography wherein a portion of a still background scene pictorially recorded is photographed with superimposed visual actions which occur in the foreground.

Prior to 1939, plaintiff saw the motion picture "Snow White and the Seven Dwarfs," produced by these defendants, and determined that the process used in producing it infringed his patent.

From the stipulation of facts in this case we find (1) that Civil Action 5/478 was filed on September 30, 1939, in the District Court for the Southern Division of New York, involving the same plaintiff and same defendants as in the present action (with some additional defendants), and constituting the same claim of infringement of said Patent No. 2,075,684 (hereinafter called the Whitman Patent) as is here claimed. The New York action was dismissed by an order of that court dated December 15, 1939, consented to by plaintiff; (2) that Civil Action No. 947 B-H was filed on May 8, 1940, in the District Court for the Southern District of California involving the same plaintiff and the same defendants, and contained the identical claim for infringement. This action was dismissed March 30, 1943, without prejudice, for lack of prosecution; (3) that no other actions were filed or pending in any court from March 30, 1943, until July 30, 1953, involving the parties to this action; (4) that neither plaintiff nor his representatives asserted any claim of infringement of the Whitman Patent, either verbally or by any written communication, against defendants or any of them from March 30, 1943, to July 30, 1953; (5) that during the period March 30, 1943, to July 30, 1953, the plaintiff, Vincent I. Whitman, was of sound health both mentally and physically; (6) that during that same period the plaintiff, Vincent I. Whitman, was not confined in any type of institution and was not absent from the United States; (7) that during that same period the plaintiff, Vincent I. Whitman, was a single man and had no dependents and was not financially destitute; and (8) that plaintiff Vincent I. Whitman was aware of the method and apparatus used by defendants, now charged to constitute an infringement of Whitman Patent No 2,075,684, prior to September 30, 1939.

On July 30th, 1953, the present suit was filed. Eighteen months later an alias summons was issued, which was served on January 19, 1955. An answer was filed on February 24th, 1955, and thereafter the defendants moved for a separate trial on the issue of laches. Meanwhile, in 1954, the patent had expired.

The court below heard the motion to dismiss upon the ground of laches. It granted the motion. Findings of Fact, Conclusions of Law and Judgment were filed. Plaintiff's appeal here is timely. The jurisdiction below was based on the patent laws of the United States. 28 U.S.C. § 1338(a). Appeal here is proper. 28 U.S.C. §§ 1291, 1292(4).

Appellant relies on two specifications of error — one, the decision is based on facts not in evidence; and two, it is contrary to law.

The theory behind the appellant's first point is that the court professedly relied on detriment to the defendant, which detriment must be, but allegedly was not, proved.

A fair reading of the court's decision below indicates his reference to the 148 F.Supp. 40 "millions of dollars of time, effort and capital in establishing Walt Disney movies as an American institution" was merely an explanatory aside, based upon facts self-evident to any resident of Southern California, and probably to most people throughout the world. The general tenor of the fact noted was one of which the court could have taken judicial knowledge. Courts must know that there are such things as airplanes and automobiles and motion pictures, and that in their total cost such things represent millions of dollars in value. We think it self-evident there must be some detriment to a person investing millions in any product if an alleged inventor of that product delays for some fifteen years, after knowledge, in bringing a suit. His right to bring suit at any time during the patent's existence is not questioned; we merely suggest there must exist some detriment to the alleged infringer by reason of substantial unexplained delay.

It is the general rule that one cannot have knowledge of the alleged infringement, and then stand idly by while the infringer embarks on a costly expansion program. Mere passage of time cannot constitute laches, but if the passage of time can be shown to have lulled defendant into a false sense of security, and the defendant acts in reliance thereon, laches may, in the discretion of the trial court, be found.

In Lukens Steel Co. v. American Locomotive Co., 2 Cir., 1952, 197 F.2d 939, the period from which laches was found was five years. Usually it is longer. Gillons v. Shell Co., 9 Cir., 1936, 86 F.2d 600 (between nine and nineteen years); Shaffer v. Rector Well Equipment Co., 5 Cir., 1946, 155 F.2d 344 (eight years); Potash Co. v. International Minerals & Chemical Corp., 10 Cir., 1954, 213 F.2d 153 (eleven years).

Appellant's principal point is that the lower court erred as a matter of law in making a finding of laches on appellant's part. Appellant points out that the statute which the trial judge stated was "analogous" — 35 U.S.C. § 286 — is not one limiting the time within which a suit must be brought, but is merely a "qualification or condition upon a right of recovery," Peters v. Hanger, 4 Cir., 1904, 134 F. 586, 588, and "limits the recovery of profits and damages to those arising from infringements committed within six years prior to the...