Page images
PDF
EPUB

tudes of strictly useful shapes or configurations of articles whose appearances are so attractive or whose configurations are so useful as to insure large sales of them in preference to other articles of the same mechanical structure, but of different forms or configuration. These useful shapes and configurations are gotten up frequently with great labor and expense, as in the case of stoves, but as under the dictum in the Gorham case such useful shapes and configurations are not decorative, patents for them have been declared void by the courts.

§ 72. Inadequacy of Protection by Limitation of Patentable Designs to Decorative.

It is well understood by manufacturers that whenever one has produced an article of new and useful shape or configuration which takes the market, but whose structure is not protected by a patent, his rivals in the trade. immediately copy this shape or configuration in articles of the same structure made by them; and they thus deprive the originator of the reward to which he should be equitably entitled by reason of the labor and money he has expended. In cases where the articles are made of cast iron or of plastic materials all that is frequently necessary in order that copies of articles of new and useful forms or configurations may be produced is to purchase in the market those of the original manufacturer, to dress them up, and to use them as patterns for producing fac-simile imitations. Hence, either the language of the Act of 1842 or the interpretation of it in the Gorham case fell short of protecting a large class of meritorious manufactured articles which have no novelty in structure, and therefore are not patentable as machines. or articles of manufacture, but have new and useful

shapes or configurations which, while not decorative, are of value to the manufacturers because their appearance pleases the eyes of the users and gives the articles a preference in the market.

§ 73. Comparison of Act of 1842 with Section 4929, as to Useful Designs.

If the language of the United States Court in the Gorham case (which is that of the Act of 1842) be compared with the Act now in force (§ 4929) it will appear that in one respect the two differ: Thus, the language of the Act of 1842 and of the court in the Gorham case is "a new and original shape or configuration of any article of manufacture;" while the language of the present Act is "any new, useful and original shape or configuration of any article of manufacture;" and it is somewhat significant that the word "useful," which the language of the Act of 1842 omits, is affixed to but one of the classes of articles enumerated in the present Act, and is not found in the denomination of any other of those classes.

At the time the Design Act of 1842 was asked for, it was understood by mechanics and manufacturers that a law was wanted which would protect manufacturers in the use, among other things, of their patterns for castings; and that when they had succeeded in producing useful forms or configurations of articles of manufacture, which had no patentable features of structure, they should be protected from having these forms or configurations copied wholesale by their rivals in trade. The Gorham decision was made under the original Act of 1842, which does not contain the word "useful" and has since been repealed, and as the language of the

present Act differs from that of the repealed Act under which the decision was rendered, it does not follow that the present Act, like the original Act of 1842, excludes from its purview the protection of a new, useful, and original shape or configuration of any article of manufacture which is not decorative. The United States Supreme Court appears to be leaning to this view, because in the case of Lehnbeuter v. Holthaus, 105 U. S. 96, 26 L. ed. 940, they, by their decision, admitted a a show case of a useful design to be patentable when there was nothing strictly decorative about it.

$ 74. Classes of Patentable Designs.

The present Act divides the articles to be protected into four classes as follows:

1. Any new and original design for a manufacture, bust, statue, alto relievo or bas relief.

2. Any new and original design for the printing of woolen, silk, cotton, or other fabrics.

3. Any new and original impression, ornament, pattern, print, or picture to be printed, painted, cast, or otherwise placed on or worked into, any article or manufacture.

4. Any new, useful and original shape or configuration of any article of manufacture.

While the first three of these classes are undoubtedly decorative, the last class is "useful" as distinguished from decorative; and in view of the language of the Act, and of the equitable consideration that manufacturers should be protected in the use of those useful forms or configurations of articles which they have produced and which approve themselves to the public, it is but just that the language of the present Act should, if

possible, be so construed as to include in the purview of the last class those appearances which are not strictly decorative but are useful.

§ 75. Novelty Necessary in a Patentable Design.

A design to be patentable must be new; but the question of how much or how little novelty constitutes a patentable design as distinguished from designs previously known does not at present seem to be well settled. In the Gorham case the court, when speaking upon the infringement of a design for spoons, said:

*

"We are now prepared to inquire what is the true test of identity of design. Plainly, it must be sameness of appearance, and mere difference of lines in the drawing or sketch, a greater or smaller number of lines, or slight variances in configuration, if [not] sufficient to change the effect upon the eye, will not destroy the substantial identity. * * So a pattern for a carpet, or a print, may be made up of wreaths of flowers arranged in a particular manner. Another carpet may have similar wreaths, arranged in a like manner, so that none but very acute observers could detect a difference. Yet in the wreaths upon one there may be fewer flowers, and the wreaths may be placed at wider distances from each other. Surely in such a case the designs are alike. The same conception was in the mind of the designer and to that conception he gave expression.

* *

*

"We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."

In the Gorham case there was no evidence before the court to the effect that the general configuration was not new, but there are many cases of designs where the general configuration is old and the only novelties are in the features or details. Thus, while the appeal in the Gorham case was pending, a manufacturer submitted to the author two pieces of carpet showing designs; the one patented, the other made by the manufacturer. He was threatened with a suit under the patent and wanted an expert opinion as to whether he did or did not infringe. In each of the two designs there was a plain ruby ground; in each there was a lattice formed. figure of narrow stripes of shaded yellow leaves crossed. diagonally so as to form what may be termed diamond panels; and in each diamond space or panel there was a group of shaded yellow leaves. The general configuration, the arrangement of figures, and the general appearances of the two designs were the same, so that an ordinary purchaser who saw the two in different stores and was not an acute observer accustomed to compare designs (which was the test in the Gorham case) would be very likely to take one for the other. The author informed the manufacturer of the Gorham appeal then. pending, and of the complainants view of the case, which was subsequently taken by the Supreme Court, and said that if the court on appeal should decide that when a patentee specified his design by details (as the Gorham Company did, in the descriptive part of their patent in suit) the patentee was restricted to substantially the same details or features, then the manufacturers' design was not an infringement. But if the court, on appeal, should take the view that it was the general appearance of the design that determined the question of substantial iden

« PreviousContinue »