The opinion of the court was delivered by: CONGER
Two actions for patent infringement and unfair competition.
One action is against the manufacturer of the alleged infringing articles and the other against a dealer who sold some of the articles. The actions were combined and tried before me as one. The issues in each case are identical.
For answer the defendant in each case denied infringement, denied the validity of plaintiff's patent and denied unfair competition. In addition each defendant's counterclaim asked for declaratory judgment, adjudging, among other things, plaintiff's patent to be wholly void and invalid in law. On the trial this counterclaim was withdrawn.
The issues before me are (a) validity of plaintiff's patent; (b) the infringement thereof by defendants and (c) unfair competition by defendants in the manufacture and sale of an article which it is claimed was similar to plaintiff's patented article.
There is no need for me to expatiate on the issue of infringement. Defendants' toy is almost an exact copy of plaintiff's. Putting them side by side one can only find minute differences, discoverable only by close scrutiny.
I also find that there was no unfair competition as alleged in the first cause of action herein. I make this finding because my ultimate conclusion gives the plaintiff the relief it asks and because the proof of unfair competition was not too satisfactory. It was stipulated that there was no palming off of defendants' product as that of plaintiff's and there was no proof of confusion to the buying public because of the similarity of the two articles.
For decision we have left only the question of the validity of the design patent issued to plaintiff's assignor on July 30, 1946. The patent states that it is for a 'Design for a toy figure or similar article.' The article which plaintiff manufactured and sold was a toy duck made of plastic and follows faithfully the design of the figure depicted in the application for the patent.
Plaintiff's toy duck was a toy for young children and is quite attractive, pleasing to the eye and quite unique.
Plaintiff's toy duck is of unique design. The design does not approximate the natural features of a duck. All of these features are unnatural, accentuated and grotesque in appearance, such as the upturned, short and broad bill, bulging eyes, the shape of the body, the wing structure and the curled up tail. All of these elements are combined into a design for a toy of unique appearance, pleasing to the eye and of great appeal to infants and children for a play toy.
I have been greatly concerned as to whether this design amounts to the dignity of an invention. This is always difficult of solution. There are no definite standards one may apply, no exact yardstick one may use. The boaderline between inventive genius and mere skill of a skilled draftsman is vague and undefined.
I have come to the conclusion that the design of this toy should have the dignity of a patent. Whatever doubts I had were dissolved by the evidence of the commercial success of plaintiff's toy.
Plaintiff started to manufacture the ducks in various combinations. The demand for them was instantaneous. I realize that commercial success will not validate a bad patent, but public acceptance of a design patent is of great, persuasive and well-nigh decisive effect in doubtful cases. Standard Match Corporation v. Bell Mach. Co., 7 Cir., 1936, 83 F.2d 365; Shoe Form Co. v. Irwin Corporation, D.C.S.D.N.Y.1946, 68 F.Supp. 618, affirmed, 2 Cir., 164 F.2d 277.
From July 17, 1946 to August 31, 1947 plaintiff sold almost 3,500,000 of these toys. During this time the demand exceeded the supply.
Defendants urge that the commercial success of plaintiff's toy was due to the use of a new plastic material, rather than to the design of the article. Of course, the use of a plastic material, new in the toy field, in no way is one of the elements that would make this toy design patentable. It is not so claimed by plaintiff. No doubt the use of this plastic material made the toys more attractive but in ...