Wilson v. Haber Bros., Inc.

• Decision Date: 25 May 1921
• Docket Number: 244.
• Citation: 275 F. 346
• Parties: WILSON et al. v. HABER BROS., Inc.
• Court: U.S. Court of Appeals — Second Circuit

275 F. 346

WILSON et al. v. HABER BROS., Inc.

No. 244.

United States Court of Appeals, Second Circuit.

May 25, 1921

Williams & Pritchard, of New York City (William S. Pritchard, of New York City, and Hylan R. Johns, of Rochester, N.Y., on the brief), for appellant.

D Anthony Usina, of New York City, for appellees.

Before WARD, HOUGH, and MANTON, Circuit Judges.

HOUGH Circuit Judge.

Decree appealed from is based upon a supplemental bill alleging infringement of design patent 43680, issued to the plaintiff Wilson, and also infringement of said plaintiff's copyright obtained by registration April 5, 1918, for a 'work of plastic art,' etc.

The subject both of design patent and copyright is a grotesque figure now commonly sold in toy shops and elsewhere, known as a 'kewpie.' In the specification of the design patent this object is called a 'doll,' and in the copyright certificate a 'figure or statuette,' but the thing is the same.

The present bill is supplementary to one in which the same rights were asserted as growing out of the same patent and copyright, and that bill resulted in a consent decree, by which this defendant specifically agreed that the court should declare (as it did) that said design and copyright were 'good and valid in law.' That consent decree also directed that a permanent injunction issue, forbidding defendant 'from infringing the rights of the plaintiffs ' Subsequent to this decree defendant obtained by importation certain other dolls or figures apparently differing in detail from those originally found to infringe, and offered such imported articles for sale; hence this supplementary bill.

The nature of a consent decree is sufficiently indicated in Hodgson v. Vroom (C.C.A.) 266 F. 267. Such decree is an agreement of parties, and is to be interpreted as an agreement; consequently defendant has agreed that both patent and copyright are valid, and it must be held to its agreement.

We express no opinion as to the propriety of copyrighting this doll, but defendant was at liberty to estop itself from contesting validity, and it has done so. Therefore both as to the copyright and the design there is no question before us but that of infringement.

Infringement of a copyright consists in the copying of some substantial and material part thereof. Eggers v. Sun., etc., Corp. (C.C.A.) 263 F. 373. It would serve no useful purpose to compare in detail the so-called statuette which plaintiff copyrighted and the doll that defendant sold; it is sufficient to say that the doll at the very least is a plain copy of a 'substantial and material' part thereof. Consequently it is an infringement.

The proper method of investigating and declaring asserted infringement of a design patent has been much discussed at bar and in the court below; it being suggested that differing and divergent, if not incompatible, rules are to be found in our previous decisions of Ashley v. Tatum, 186 F. 339, certiorari denied 225 U.S. 707, 32 Sup.Ct. 839, 56 L.Ed. 1266, and Borgfeldt v. Weiss (C.C.A.) 265 F. 268. We discover no contradiction between these decisions, though they do afford illustrations of different methods of approaching solution of the same ultimate problem, which is, like every question of infringement, always an inquiry of fact.

Whether the problem...