Phœnix Knitting Works v. Bradley Knitting Co.

QUARLES, District Judge (after stating the facts as above). Section 4929, Rev. St. (U. S. Comp. St. 1901, p. 3398) provides: “Any person who has invented any new, original, and ornamental design for an article of manufacture, not known or used by others in thi,s country before Eis invention thereof, and not patented or described in any printed publicátion in this or. any foreign country before his invention thereof, or more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law and other due proceedings had, the same as in cases of inventions or discoveries covered by section forty-eight hundred and eighty-six,, obtain a patent therefor.” It was conceded that complainant herein is regularly engaged in the business of the manufacture and sale of a flat neck muffler known as-the “Phoenix Muffler,” some of which are provided with serrated edges-as shown by the exhibits and exhibited in the design of the patent in suit, some of which are provided with straight edges only, or other designs of knitting. Evidence was offered showing that the complainant had extensively advertised this scarf, and had sold as many as 150,000 dozen similar to the two scarfs introduced in evidence by complainant. The law is well settled, as stated by Mr. Robinson in his work on patents (volume 3, p. 727): A design presenting a new appearance to the eye and creating a demand for the goods on which it is impressed is patentable, although simple and resembling other designs. In Untermeyer v. Freund (C. C.) 37 Fed. 342, the law is stated as follows: “If a design presents a different impression upon the eye from anything that precedes it, if it proves to be pleasing, attractive, and popular, if it creates a demand for the goods of its originator, even though it be simple and does not show a wide departure from other designs, its use will be protected. * * * A design requires invention, but a different set of faculties are-brought into action from those required to produce a new process or a new machine. In each case there must be novelty, but the design need not be useful in the popular sense. It must be beautiful. It must, appeal to the eye. The distinction is a metaphysical one and difficult to be put in words”—[citing Gorham v. White, 14 Wall. 511, 20 L. Ed. 73], The test is the appearance to the ordinary observer, not to experts. Kraus v. Fitzpatrick (C. C.) 34 Fed. 39; Redway v. Ohio Stove Co. (C. C.)38 Fed. 582. This is true even though old forms and familiar objects be combined. If the new design imparts to' the eye a pleasing impression, such production is patentable. Eclipse Manufacturing Co. v. Adkins (C. C.) 44 Fed. 280; Smith v. Stewart (C. C.) 55 Fed. 482; General Gaslight Co. v. Matchless Mfg. Co. (C. C.) 129 Fed. 137. ■ With these principles in mind, the patents set up by way of anticipation, some being for neckties, some for stockings, neck, and chest protectors, do not disclose the design of the patent in suit. The fapt that the art of knitting was old, that certain stitches employed were [165] old, that four-in-hand neckties were old, that various scarfs were old, did not prevent Joseph Mead from furnishing a muffler of the design of the patent which was entitled to protection. The fact that various elements of this scarf were found in various other designs would not defeat his application. The court was strongly impressed while examining the complainant’s samples and the various advertisements thereof in newspapers and magazines that there is something very attractive about complainant’s design. It is difficult to describe the peculiar elements which produce this effect. It may, in the language of the trade, be said to be “jaunty,” “natty,” “smart,” “neat.” Its lines are graceful. It is not the zigzag stitch alone, it is not the color nor the serrated edges, but what the French would call the “tout ensemble,” that is responsible for this pleasing effect. Other scarfs have been exhibited showing various features that seem quite like the scarf of Mead; but they do not awaken the pleasing impression that is so marked in the complainant’s design. Some are clumsy and coarse, and none of them approximate the complainant’s design as to the general effect on the eye of the ordinary observer. There is another fundamental proposition of law which has an important bearing upon this controversy. A patent is prima facie evidence of novelty, and this presumption is of great weight. The party seeking to overthrow it must make a case so persuasive as to leave no room for doubt or controversy. Miller v. Handley (C. C.) 61 Fed. 100; Mast, Foos & Co. v. Dempster Mfg. Co., 82 Fed. 327-332, 27 C. C. A. 191. The unsupported oral testimony which will warrant a finding of prior use must be clear and satisfactory. It is always open to explanation. It ought to be sufficient to establish such a use beyond a reasonable doubt. Barbed-Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450, 36 L. Ed. 154; Deering v. Winona Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118, 39 L. Ed. 153. Many other cases are cited by complainant’s counsel which are equally persuasive. Applying these principles to the evidence in this case, I cannot find that the defendants have discharged the burden which the law places upon them in such a case. It would be a waste of time to consider the evidence in detail. It will be remembered that some of the rules applied to mechanical patents are wholly inapplicable to those for design. In Untermeyer v. Freund, supra, the court say: “To speak of the invention as a combination, or to treat it as such is to overlook its peculiarities.” In Smith v. Stewart (C. C.) 55 Fed. 481, the court say: “Such designs generally, if not uniformly, contain nothing new except the appearance presented to the eye by arrangement of previously existing material, such as lines, scrolls, flowers, -leaves, birds, and the like. The combination, where several separate objects are employed, need not be, and cannot be, such as this term signifies when applied to machinery. * * * The object sought in a design is a new effect upon the eye alone, a new appearance, and the several parts need not have any other connection than is necessary to accomplish this result.” The scarfs manufactured by defendants appear to be close imitations of the complainant’s scarfs. The addition of a V-shaped piece [166] at the back of the neck, which is not disclosed either when the scarf is worn or packed in the box, will not relieve it from' infringement. It is a mere mechanical adjunct which may improve the utility of the scarf by keeping it in place, but which contributes nothing to the appearance of the design. I am constrained to hold that the complainant’s patent has been sustained, and that the same has been infringed. An interlocutory decree will be prepared in accordance with this opinion.