Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Company, Inc.

260 F.2d 637, 119 U.S.P.Q. (BNA) 189, 1958 U.S. App. LEXIS 5872

• Court: Court of Appeals for the Second Circuit
• Decided: October 21, 1958
• Docket: 24934_1
• Status: Published

Opinions

HAND, Circuit Judge.

This appeal arises upon a complaint in two counts — one for the defendant’s infringement of a registered copyright upon a wrist watch, and the other for infringement of Design Patent No. 178,091 upon the same watch. The complaint also contained a count for unfair competition which was dismissed, but from which the plaintiff has not appealed. The defendant moved to dismiss the copyright count because the watch was not copyrightable, and so Judge Dimock decided. Hence he found it unnecessary to hold whether § 13 of the Copyright Act, 17 U.S.C. § 13, forbade an action for infringement because the plaintiff had obtained no certificate of registration. He held the design patent valid and infringed, and summarily granted a permanent injunction against the defendant because it had put in evidence all the earlier watches on which it relied as anticipations, and he thought that he was in as good a position to determine the issue of invention as he would have been after a trial.

It is indeed true that only by an inspection of the design patent and of the actual watches put in evidence can their similarities and differences be compared; and that of course is true, not only as to the watches of the parties to the action, but as to those that the defendant put in evidence as anticipations. We shall not try to improve upon Judge Dimock’s verbal description of the plaintiff’s design patent and of the defendant’s alleged infringing watch. That was as follows (155 F.Supp. 933-934):

“Plaintiff’s Galaxy is a wrist watch made to sell at $325. Its distinctive feature is the appearance of its face. In place of numerals there are jeweled ‘sticks’ of equal length and width except the stick of the six o’clock position which is shortened to permit the introduction of the name ‘Le Coultre ©.’ The watch has no hands in the usual sense. Instead, transparent and practically invisible rotating discs, concentric with the round face, are substituted and, at a point at the perimeter of each disc, is a round mounting containing a jewel, one mounting being smaller than the other and presumably serving as an hour ‘hand’ while the larger indicates the minutes. At the axis of the discs appears a polygonal metal head cut with facets like a rose-cut diamond. Inside the ends of the sticks, and concentric with the discs, there is a circle graduated into sixty minutes.

“Defendant’s Elegance Constellation is made to sell at $295. In general appearance it is very similar to plaintiff’s Galaxy, the difference being: (1) The sticks at the four quarter positions are the only ones that are jeweled while the others are knurled with much the same effect. (2) Instead of a short stick at six o’clock, it is at twelve o’clock and the word, ‘Benrus’ there appears. (3) Instead of the two round jewel holders on the invisible discs, there appears on one an arrow-shaped metallic indicator scored so that it reflects the light from two planes and on the other a triangular metallic indicator in which a jewel is mounted. (4) The head at the axis is flat and cut with a six pointed star instead of simulating a rose-cut diamond. (5) The circle inside of the ends of the sticks is not graduated into minutes. (6) Instead of the conventional attachments for the wrist band which appear on plaintiff’s Galaxy, the Elegance Constellation employs lugs, of a shape somewhat similar to the angular points of the jaws on a pair of pliers, which give the watch case the effect of tapering from the greatest diameter of the watch to the point where it meets the wrist band.”

We first take up the copyright count. We do not think it necessary to decide whether the plaintiff’s watch was copyrightable under § 5(g) of Title 17 U.S.C. which allows the copyrighting of “works of art; models or designs for works of art”; arguendo, we will assume that it was. We think, however, that even so, § 13 of Title 17 forbade any action for infringement of the copyright when the Register of Copyrights had refused, as he did, to accept the watch as copyrightable under § 5(g). It is true that the few decisions on the question leave the answer uncertain. In White-Smith Music Pub. Co. v. Goff, 1911, 187 F. 247, the First Circuit affirmed a judgment dismissing an action for infringement in which the Register had refused to register the publication; but the only question discussed either in the Circuit Court of Appeals, or in the District Court (180 F. 256), was whether the plaintiff was entitled to an extension of the original copyright, which had expired. Judge Putnam did indeed say (187 F. 247) that, “although registration was refused, yet it [the plaintiff] fully complied with the requirements of law, and is entitled to maintain this suit if it had any statutory right to the extension.” So far as appears, the defendant did not raise the objection, and it was not necessary to the decision which was against the plaintiff on the merits. The quotation was at best a dictum, and we do not deem it an authoritative precedent.

The next decision was of this court in 1921 (Lumiere v. Pathé Exchange, Inc., 275 F. 428), affirming a judgment dismissing an action for infringement, though without prejudice, because the copyright owner, the plaintiff, had deposited with the Register only one, instead of two, copies as the statute required. The point was not raised or decided whether, had the plaintiff deposited two copies and the Register refused to issue any certificate under § 209 of Title 17, the action would have succeeded. Thus this decision also did not pass upon the issue here at bar.

Bouvé v. Twentieth Century-Fox Film Corporation, 1941, 74 App.D.C. 271, 122 F.2d 51, was an appeal from a judgment of the District Court, 33 F.Supp. 462, in an action under Federal Rule of Civil Procedure 81(b), 28 U.S.C. to compel the Register to issue the certificate authorized by § 209 of Title 17. The question was whether a collection of “contributions to periodicals” was a single “book” and might be registered as such for a single fee. The Register refused to “register” the “work” except upon payment of a separate fee for each contribution, and both the District Court and the Court of Appeals held that he was subject to what, for brevity, we may still speak of as a “mandamus.” In discussing the Register’s powers the court said (122 F.2d at page 53) that “in light of recent trends and the divergent philosophies of different schools of thought as to what constitutes art, to sajr nothing of the large possibilities inherent in plastic works of a scientific or technical character, it seems obvious that, unless the Register has some power to control deposits for copyright, it may soon become necessary to build a new library annex. It seems obvious, also, that the Act establishes a wide range of selection within which discretion must be exercised by the Register in determining what he has no power to accept.” It decided that his refusal was “clearly erroneous” and that the judgment of the District Court compelling him to register the “book” was correct. It is the rule in the District of Columbia as well as elsewhere that “mandamus” should not go when another adequate remedy exists. United States ex rel. Frey v. Robertson, 1933, 61 App.D.C. 394, 63 F.2d 457; Calf Leather Tanners’ Ass’n v. Morgenthau, 1935, 65 App.D.C. 93, 80 F.2d 536, 542. Therefore, the affirmance of the judgment below necessarily presupposed that no action for infringement would lie in which the question of “registration” could be decided.

In the case at bar it might be argued that the Register’s decision whether the plaintiff’s wrist watch was a “work of art” within § 5(g) of Title 17 involved such an exercise of discretion that “mandamus” will not go to review it. It is true that “works of art” is a loose phrase whose perimeter is hard to define; nevertheless, the decision here did not demand the exercise of a discretion that was conclusive with the Register. There were no disputed facts; and the mere fact that the meaning of the phrase, “works of art,” admits of debate does not make it different from many statutes whose interpretation is every day regarded as reviewable by courts. The situation was wholly unlike that disclosed in Panama Canal Co. v. Grace Line, Inc., 1958, 356 U.S. 309, 78 S.Ct. 752, 2 L.Ed.2d 788, where the court said that “the * * * conflict rages over questions that at heart involve problems of statutory construction and cost accounting” where there were “matters on which experts may disagree” (356 U.S. at page 317, 78 S.Ct. at page 757), and where “the decision to act or not to act is left to the expertise of the agency burdened with the responsibility for decision” (356 U.S. at page 318, 78 S.Ct. at page 758).

We find confirmation of our conclusion in the text of the last sentence of § 13, for it denies the right to sue for infringement “until the provisions of this title with respect to the deposit of copies and registration of such work shall have been complied with,” and that imports more than the mere “deposit of copies.” Since the owner must submit an application and pay the required fees in order to make a deposit, 17 U.S.C. § 202.3(b) (1952 ed. Supplement V), we can think of no other added condition for “registration” but acceptance by the Register. We therefore affirm the judgment on the first count because the plaintiff did not succeed in “registering” his wrist watch as a “work of art” under § 5(g).

Coming next to the design patent, we agree that Judge Dimock was justified in holding that the defendant had put in evidence all the prior art in the form of earlier disclosures and earlier watches on which it wished to rest its defense of anticipation. If validity was to be determined only by a comparison of these with the disclosure, and that was the whole of any possibly relevant evidence, it would have been proper to decide the claims summarily. However, we do not read the patent act quite so narrowly; the validity of design patents like that of all patents depends upon the general state of the industry involved. The amendment of 1952 — § 103, Title 35, — provides that “a patent may not be obtained * * * if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”¹

A design patent has no claims, so that it is impossible to select any specific combination of the features of the design on which alone its validity may rest; it will cover any combination of the component parts disclosed that is in fact new and was beyond the compass of a designer of ordinary skill. In the case at bar there were in the prior art “sticks” and “floaters” in combination, as for example in Gardner’s clocks in 1946 (Des. Pats. 146,101 and 146,102). “Sticks,” although not jewelled, were at times made of metal, and raised above, or depressed below, the face of the watch to catch the light and sparkle so as to give somewhat the effect of a jewel (Dupertuis, Des. Pat. 129,370 (1940); Exhibit 12, Defendant’s Appendix, p. 74a). Moreover, in Exhibit 22 (Jaeger, No. 257,783 (1949) ) the face of the watch, which shows only the ends of the hour and minute hands in combination with “sticks” was very close in appearance to the combination of “sticks” and “floaters” of the plaintiff’s patent here. However, even though we should say that this was pro tanto an equivalent of a combination of “sticks” and “floaters,” we do not find anywhere in the record such a combination in which these two elements were jewelled or otherwise made to sparkle.

The issue, as we view it, is what was in fact the combination that caught the taste of the public and succeeded in attracting purchasers in large number; for a design patent like this, that has no utility as such, is directed only to appearances that please the taste. Assuming that the combination of “sticks” and “floaters” was old, that of making them sparkle was not. Moreover, a number of years had passed before the patent was applied for, during which all the elements of the design were disclosed; yet this combination had not been shown. That is a situation in which it was permissible to say that since the combination had been at hand for so long and turned out to be esthetically pleasing, it was a legitimate inference that it was not obvious to those skilled in the art. Nevertheless, it seems to us that it was necessary to adduce the testimony of those so skilled as to whether in their judgment it was the combination of the three elements that constituted the attraction of the watch. Without such testimony we cannot say that the success of the watch was not due to the skill of the patentee in marketing its goods. We must therefore await a trial in which the conditions of the industry may be explored before we pass upon the issue of validity. The judgment will be reversed and the cause remanded for such a trial.

We need not discuss the defendant’s further defense that it was not possible to secure both a copyright and a design patent upon the same disclosure. The Supreme Court in Mazer v. Stein, 1954, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630, did, indeed, decide that the same disclosure might support a design patent and a copyright, but it expressly refused to decide whether the grant of either monopoly precluded that of the other. On the other hand in Korzybski v. Underwood & Underwood, Inc., 1929, 36 F.2d 727, we held that the grant of a patent presupposed a dedication to the public of the disclosure, except so far as the statute specifically reserved it to the patentee. Since we are holding that there was no enforceable copyright in the watch, we need not now reconsider our decision; for we do not think that a copyright which is not enforceable, even though it may be theoretically in existence, is an obstacle to securing and enforcing a patent. The doctrine of Korzybski v. Underwood & Underwood, Inc., supra, must rest upon the assumption that the owner of the statutory monopoly has some power to protect his “work,” for otherwise any dedication would be without consideration.

The judgment dismissing the copyright count will be affirmed. The judgment granting a permanent injunction upon the design patent count will be reversed, and the cause remanded for trial.

1 . See Lyon v. Bausch & Lomb Optical Co., 2 Cir., 1955, 224 F.2d 530, 536.