The opinion of the court was delivered by: LEIBELL
This is a suit for infringement of Design Patent No. D-161,296 and for unfair competition. The application for the patent was filed April 19, 1950. The patent was issued on December 19, 1950 to Henry K. Tourneau and by him licensed to Tourneau, Inc., as sole licensee. The complaint alleges that defendant is infringing the patent and causing damage to plaintiffs because of the inferior quality of defendant's alleged imitations. The complaint further alleges that plaintiff's design has acquired a secondary meaning in the trade and that defendant is competing unfairly through its advertising and sale of items embodying plaintiff's design.
Defendant by its amended answer challenges the validity of the patent, claiming that the invention described therein was in public use for more than one year prior to plaintiff's application; that it is functional rather than ornamental; that it is lacking in novelty and invention; and that it was anticipated by the prior art. In addition defendant counterclaimed for judgment of invalidity and for damages arising from plaintiff's alleged dissemination of statements to the trade that defendant was an infringer, as well as for an injunction prohibiting plaintiffs from issuing said statements. On the trial of the action, the counterclaim was withdrawn. The issue of infringement is not now contested by defendant.
That leaves only two issues in this case -- the validity of the patent and defendant's alleged unfair competition.
The individual plaintiff, a citizen of the United States and a resident of New York City, has been in the merchandising end of the watch business for thirty-five years. He has a store located at 431 Madison Avenue, New York, and a 'shop' at 47th Street and Second Avenue, New York, New York, where he manufactures watches and bracelets. Apparently the corporate plaintiff, a New York corporation, is the entity through which plaintiff presently conducts this business. The defendant partnership maintains its place of business at 105 West 47th Street, New York, New York. It has been in existence about 2 1/2 years and manufactures jewelry, particularly bracelet watches -- watch cases and double strand block bracelets.
Alleged invalidity of plaintiffs' patent.
Plaintiff's patent purports to be for 'a new, original and ornamental Design for a Combined Watch Case and Bracelet'. The patent contains no specifications other than the accompanying drawings. These disclose a watch band or bracelet consisting of four strands, two of which extend from each clasp of the bracelet to the casing of the watch. The strands are adjacent to one another at the two clasps of the bracelet and diverge gradually till they meet the casing to which they are soldered. Each strand is composed of small, solid blocks and in the jewelry trade such strands are known as 'sticks'. The 'bezel' of the watch, the portion of the watch casing on either side of the watch face extending in the same direction as the bracelet, has been 'scored' with markings to make it correspond in appearance to the blocks of the bracelet. This creates the illusion that the bezel is a continuation of the bracelet and a part of the bracelet, and that each strand of the bracelet runs from clasp to clasp, with the watch suspended between them.
The blocks as used by the corporate plaintiff are generally of the same precious metal as the watch casing, although that is not essential. Frequently the blocks are perforated to permit the mounting of diamonds or other precious stones thereon. Tourneau, Inc. also markets bracelets in which the blocks are slit along the side so that each strand seems to consist of two layers of blocks. This type of block is known as an 'airline block'. According to the plaintiff, Henry K. Tourneau, the use of such blocks increases the flexibility of the bracelet.
In the course of his testimony on the trial of this action, Mr. Tourneau stated in effect that his design, which he named 'Tournette', was intended to accomplish a graceful blending of watch case and bracelet bands, so that the length of each band from clasp to clasp would appear as one, uninterrupted line.
That indeed is the essence of plaintiff's design.
Plaintiff's Exhibit 1 is a catalogue of the merchandise of seven jewelry manufacturers including defendant. It was published in June, 1952. Pages 44 and 45 of said catalogue contain representations of a number of combination watch cases and bracelets made by defendant. All of these combinations embody plaintiff's design. Defendant does not really dispute this, nor does defendant claim that any of its combination watch cases and bracelets were produced prior to the issuance of plaintiff's patent.
In July of 1951 about one month after defendant commenced the manufacture of block bracelets, Irving Tishman, a member of the defendant partnership, submitted to Mr. Tourneau sample sticks of blocks which the defendant was then manufacturing. According to Mr. Tishman he knew that Tourneau, Inc. was selling watches with the 'Tournette' design and he felt that his 'sticks' might be usable. Tourneau ordered from the samples submitted by Tishman, but returned a portion of the order because the manufacturer who assembled the combination of watch case and bracelet for Tourneau complained that defendant's sticks were not satisfactory. At the time Tourneau placed the order with Tishman, he explained his design to Tishman and represented himself to be the originator thereof. It is not disputed that subsequent to this business transaction defendant entered upon the manufacture of its alleged infringing articles.
Defendant contends that the design in suit was in use at least a year prior to the issuance of the Tourneau patent. In support of this contention defendant offered in evidence (Ex. B) a copy of a Tourneau advertisement which appeared in the New York Times of January 16, 1949. The product advertised did not utilize the design in issue. The combination watch and bracelet depicted in the advertisement contained loops on the side of the watch case through which the flat bracelet strands passed. The strands were not made of single blocks and they ran alongside the watch case. They were not attached to the forward and rear ends of the case. On the contrary they were clearly disconnected from the watch case. Furthermore, there was no scoring on the bezel of the case. Exhibit 13 is an example of the watch case and bracelet manufactured by plaintiff and shown in Exhibit B. A comparison of Exhibit 13, which was not a success, with the design patent (Ex. 2) shows that the main feature of plaintiff's patent was not embodied in Exhibit B and Exhibit 13.
Defendant also asserted that other jewelry manufacturers have produced combinations like plaintiff's. This was amply demonstrated. (Ex. D) But defendant's proof in respect to the time when these close copies first appeared on the market was vague and indefinite and totally insufficient to show that any of them were made before the Tourneau patent was applied for. Defendant particularly stressed a watch case and bracelet manufactured by Irving Pugatch, as embodying a design substantially like that of the plaintiff's. It is very similar but not exactly like plaintiff's. The bracelet of the Pugatch combination consisted of twin strands of blocks with diamonds mounted thereon. The bezel of the watch case however was not so constructed as to correspond exactly to the blocks of the bracelet. The bezel was narrower than the bracelet and it was not 'scored'. Consequently the continuity of the strands was broken when the stands reached the case and in that respect the Pugatch design differed from plaintiff's design. Moreover, the proof offered by defendant to establish the time when the Pugatch watch was first marketed in inconclusive.
Leo Lipp, a partner in the defendant partnership, testified that he first saw the Pugatch creation in late 1948 or early 1949. Lipp's testimony in respect to the time when he originally saw the Pugatch watch and bracelet was not corroborated in any way and is not persuasive. No one was produced from Pugatch's shop to testify on this question. The item photographed on Exhibit D (7th line) was obtained by defendant in October 1952 to be photographed for use at this trial. I have concluded that Pugatch's item was not produced or known to the trade before plaintiff's design was advertised and the patent applied for.
The difficulty of obtaining a design patent was recently commented upon by the Court of Appeals for this Circuit. See Chas. D. Briddell, Inc. v. Alglobe Trading Corp., 2 Cir., 194 F.2d 416. The prime requisite to the validity of such a patent is that it be the product of invention, of 'inventive genius'. Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S. Ct. 768, 37 L. Ed. 606; Neufeld-Furst & Co. Inc. v. Jay-Day Frocks, Inc., 2 Cir., 112 F.2d 715; A. C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98; Nat Lewis Purses Inc. v. Carole Bags, Inc., 2 Cir., 83 F.2d 475. It is not sufficient that the design be novel, ornamental, or pleasing to the eye. General Time Instruments Corp. v. U.S. Time Corp., 2 Cir., 165 F.2d 853, certiorari denied 334 U.S. 846, 68 S. Ct. 1515, 92 L. Ed. 1770. 'The conception of the design must require some exceptional talent beyond the range of the ordinary designer familiar with the prior art'. Gold Seal Importers, Inc. v. Morris White Fashions, Inc., 2 Cir., 124 F.2d 141, 142. Krem-Ko Co. v. R. G. Miller & Sons, Inc., 2 Cir., 68 F.2d 872. 'An unstartling regrouping of old elements' in ...