Home/S.D. California/Laskowitz v. Marie Designer, Inc.

Laskowitz v. Marie Designer, Inc.

119 F. Supp. 541, 100 U.S.P.Q. (BNA) 367, 1954 U.S. Dist. LEXIS 4415
CourtDistrict Court, S.D. California
DecidedFebruary 23, 1954
Docket15315
StatusPublished
Cited by29 cases

This text of 119 F. Supp. 541 (Laskowitz v. Marie Designer, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Laskowitz v. Marie Designer, Inc., 119 F. Supp. 541, 100 U.S.P.Q. (BNA) 367, 1954 U.S. Dist. LEXIS 4415 (S.D. Cal. 1954).

Opinion

YANKWICH, Chief Judge.

The plaintiff, Joseph F. Laskowitz, is the owner of the patent for an ornamental design for a chair issued on February 14, 1950, on an application filed August 15, 1947. Plaintiff corporation, Contour Chair-Lounge Co., Inc., the exclusive licensee and manufacturer under the letters patent, is a Missouri corporation, incorporated on April 1, 1946, with its legal place of business in the. City of St. Louis, Missouri.

The defendant corporation, Marie-Designer, Inc., is a California corporation consisting of the individual defendants. Victor E. Le Doux and Marie A. LeDoux. In 1947, “Contour” granted to-the individual defendants exclusive distributing rights in the Western States-to the “Contour Chair-Lounge”, which, is the subject of the patent.

By a contract dated April 9, 1949, the-distributing rights of the individual defendants were extended throughout the-United States and Marie-Designer, Inc.,, was incorporated as a California corporation to carry on distribution. A new contract was entered into between Contour and Marie Designer on August 25, 1952. This contract and all the defendants’ rights under it were terminated on December 31, 1952.

Chairs embodying the patented design in the amount of some six million dollars were sold and some $800,000 was-spent in national advertising. The plaintiffs shared in the expenditure, indirect ly, by adjusting their prices to the sole-distributor to absorb the expenditure.

The present action was instituted on. March 23, 1953. It charges patent and trade-mark and trade-name infringement and unfair competition, and seeks injunction and damages.

The defendants have denied infringement, have challenged the validity of the patent and, in a counterclaim, seek to recover damages for infringement of copyrighted advertising material by the plaintiffs after the severance of their relationship.

After a hearing, a temporary injunction was issued. An appeal from it is now pending.

The cause has been tried on the merits and submitted.

I

Design Patent

At the core of the entire controversy is the design patent. And it is well to discuss briefly the nature of design patents in order to dispose of the contention of invalidity.

Patents for designs are covered specifically by statute. 1 The requirements which have been in the law since 1842, 2 are that the design be new, original and *544 'Ornamental. The Supreme Court, in interpreting the Act of 1842, which used only the words “new’ and original”, laid down certain fundamental tests which the courts have followed to the present day.

In stating the object of the statute the Court said:

“The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that, not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts. It is a new and original design for a manufacture, whether of metal or other material; a new and original design for a bust, statue, bas relief, or composition ifi alto or basso relievo; a new or original impression or ornament to be placed on any article of manufacture; a new and original design for the printing of woolen, silk, cotton, or other fabrics; a new and useful pattern, print, or picture, to be either worked into, or on, any article of manufacture; or a new and original shape or configuration of any article of manufacture — it is one or all of these that the law has in view. And the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious producer of those appearances the advantages flowing from them.” 3

Significant of the importance of the judicial thinking embodied in the decision just referred to is the fact that it included the “decorative” (i. e. ornamental) character of the design in its requirements for patentability. So when the subsequent reenactment of the section added the latter word it merely made the statutory law conform to the court-made law already in existence. The case just cited dealt with the question of infringement only; the criteria established were used later on to determine patentability. And cases old and new agree that the test is visual. Patentability exists if the design looked at as a whole (le tout ensemble) gives a pleasing impression. 4 Of course, the result must come from the exercise of the inventive faculty. 5 *If these elements are present it is not material that the design may embody a regrouping of familiar forms and decorations. 6

In determining whether a patent design is infringed, the test is, ultimately, the eye test. That is, do the two look alike to the ordinary observer? The Court óf Appeals for the Second Circuit has stated the problem in this manner:

“The test of infringement is whether the two designs have substantially the same effect upon the eye — not the eye of an expert, but the eye of the ordinary observer, giving such attention to the matter as purchasers usually give.” 7

And even where the patented design is limited to the form shown in a drawing, any significant differences in configuration and general appearance, as they present themselves to the average buyer of the article on inspection, will be suffi *545 -dent to avoid infringement. 8 Or as the Supreme Court has put it,' the true test of identity of design “must be sameness of appearance”. 9 And the identity of appearance is determined by “sameness of effect upon the eye”. 10

Tested by these rules, we are satisfied that there is invention in the design.

II

- The Accused Design

While infringement is denied, no attempt was made by the defendants to show any dissimilarity between the two chairs. Indeed, judging by testimony attempted to be elicited as to the difference in methods of operation and function, I am of the view that the defendants actually thought that the departures in the manner of construction of the chairs were so significant as, ,to avoid, infringement.

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Bluebook (online)
119 F. Supp. 541, 100 U.S.P.Q. (BNA) 367, 1954 U.S. Dist. LEXIS 4415, Counsel Stack Legal Research, https://law.counselstack.com/opinion/laskowitz-v-marie-designer-inc-casd-1954.