WINS PATENT SUIT
Court Holds That Alvin Silver Co.'s Design Infringed Patent Held by Whiting Mfg. Co.
After deliberating for a week, Judge Learned Hand in the United States District Court, New York, issued an opinion last Thursday upholding the Whiting Mfg. Co., in its equity action against the Alvin Silver Co., involving the alleged infringement of a sterling silver flatware pattern, claimed by the plaintiff to be covered by design Letters Patent No. 54,452. The opinion enjoins the defendant from continuing the alleged infringement and decrees for an accounting in favor of the Whiting concern.
In the action which was started several months ago it was claimed that the "King Albert" pattern, manufactured in flatware by the plaintiff was being infringed upon by the Alvin concern which, it was maintained, was putting out flatware of a colorable imitation under the name of the "Richmond" pattern.
The answer to the action filed by the Alvin firm was a general denial of the allegations set forth in the bill of complaint and averred that the defendant never infringed on the plaintiff's letters patent. Shortly after the suit was instituted the court refused to issue an injunction against the defendant and also denied a motion referring the case to a master. As the result the action was placed at the head of the general calendar and on Tuesday, Jan. 24, and Wednesday, Jan. 25, the matter was brought before Judge Learned Hand. After all of the testimony had been submitted, Judge Hand reserved decision but last Thursday handed down his opinion. This opinion reads in part as follows:
Learned Hand. D. J.: The validity of the patent has not been challenged, and wisely, because it is apparent by a glance at the prior art that if the design be taken as a whole, i. e., outline and decoration, there is nothing which comes near it. That it is valid is therefore beyond doubt. But what is the patented design? Certainly not the decoration alone, or the outline alone. The patent under all the books must be taken as a unity and only that infringes it which imitates that unity.
This being true, the real question at issue is whether the defendant has adopted the design so taken as a unity. The cases cited have uniformly followed the rule first laid down in Gorham v. White, supra, which is this. Some departures from the design the patent covers, but they must be small. They are to be ascertained, not by comparing the design with the infringement, side by side, to see whether they are then distinguishable, either by experts or laymen. The test is whether there is a substantial number of the common run of buyers who having seen the design will carry it inexactly enough in their minds to buy the infringement without any conscious choice between the two. So much latitude the patent has in application. Now it is clear that any such test depends altogether upon the relative emphasis of the different features of the design in the more or less inaccurate memory of those who have once seen and liked it. One man will be impressed with the decoration, another with the outline, a third only with the combination of both. And since our memories are entirely the creatures of our interest, what each will carry away depends inevitably upon what has struck his fancy.
For myself, I feel reasonably sure that I should never have made any mistake between the two. While the defendant's decoration is substantially an exact copy of the design, it is laid upon a spoon-end which chances not to be to my liking, which indeed seems to me ugly, while the whole design
happens to please me. I think this difference would have prevented any confusion in my mind. However, it is extremely hard now, after so much study of the two side by side, to get any just idea of what one would have remembered of the design, had one seen that alone, and then only once. Any conclusion on that score is of the most questionable validity. Besides, a judge is not justified, unless he is forced to do so, to assume that his own judgment is a proper measure of other people's, but he should have recourse to the opinions of such witnesses as by their experience know the habits of buyers in general. The judgment of these alone is of any consequence when the issue is of the future conduct of the buying public. That was certainly the attitude of the Supreme Court in Gorham v. White, supra, in which the absence of any answer to the plaintiffs evidence that ordinary observers would be confused, was made the very turning point of the decision.
In the case at bar there were called only five witnesses, all told, who had any actual experience in selling silverware to the public. Brogan, Jackson and White for the plaintiff, and Nash and McCarron for the defendant Brogan and Jackson thought that the confusion would arise in the minds of those who did not have the two before them, and Nash and McCarron thought not. Each was well qualified to speak firm his or her experience. White in his direct examination was not examined on the issue at all; all he said about it was upon cross examination. He thought that a person not having both spoons before him would be mistaken, unless he owned one and had got used to it on his table. As a casual observer comes within the scope of the rule, I think that White must count with the plaintiff. His own refusal to carry the plaintiffs pattern was based upon its similarity with the defendant's, itself a circumstance of some moment.
So far as I could see there was nothing in the appearance of these witnesses to help one to distinguish between them on the score either of credibility or competence, and I should not wish to decide a case upon a merely numerical preponderance of witnesses. The disagreement between them may, however, have arisen only because they were thinking of different kinds of customers. They were faced with an abstraction, necessarily no doubt, but still an abstraction, i. e., a normal customer. Now each one of them constructed his answering conception depended probably in part any way on reasons of which be was not thoroughly aware himself. It appears to me to be a mistake to assume that any of them inevitably fused in his mind customers of all kinds, or that they would necessarily have disagreed, if they could have done what is probably in any case an impossibility. The important point is that some of them thought that at least a substantial number of customers would in practise confuse the designs, and that these seemed to them not persons of exceptional carelessness. The answer of those who said yes seems to me inherently better than of those who said no, when the inquiry as here does not involve the majority of all customers, but only whether there are numerous persons, not noticeably careless, who would make the required mistake.
There is another circumstance which somewhat corroborates this conclusion. The decoration is new, the outline old, exactly illustrated at least once before, and approached more than once. It is natural that a new element should catch the attention and remain in the memory of those observers at lease to whom it appears as new. What has interested them would be likely to absorb and exclude what has not. If so. the decoration which has predominated in their fancy will be likely to control their decision to buy, rather than the outline.
The case is indeed a close one, and my past experience has taught me an extreme diffidence of my own judgment in this branch of the law, but upon the whole the balance seems to me to lean a little towards the plaintiff. The patent is highly meritorious, and the distinctively new feature of it has been frankly imitated, no doubt in good faith, if by good faith one means that the defendant was satisfied of its rights. Still I see no reason why a court should be over-solicitous to protect an imitator in such a case. No doubt the plaintiff has always the burden, but when the most original part of the design has confessedly been taken and it is open at best to grave doubt whether that is not the element which will stick in people's minds, there is no reason to press too hardly upon the sufficiency of the proof that the less striking feature will not always serve to distinguish the two.
Judge A. N. Hand's refusal to grant a preliminary injunction was not, it is true, by way of compromise, nor was it the condition of an early trial. Yet it must be a very clear case which could authorize a judge to grant such a motion, and it was natural that when the evidence of infringement was in dispute he should have been unwilling to solve it in the plaintiff's favor. If the test was the impression which the two designs make upon the judge alone, the decision of such a motion might indeed be conclusive, and as I have said, I should myself decide for the defendant, but if it is not that, it is hard to see how on such a record anyone could grant a preliminary injunction.
Decree for the plaintiff for injunction and accounting before William Parkin, Esq.
February 2, 1922.
Source: The Jewelers' Circular - 8th February 1922