Where a new and original shape or configuration of an article of
manufacture is claimed in a patent issued under Rev.Stat. § 4929,
its utility is an element for consideration in determining the
validity of the patent.
Gorham Manufacturing Co. v.
White, 14 Wall. 511, distinguished.
The test of identity of design in the invention covered by such
a patent is the sameness of appearance to the eye of an ordinary
observer.
The saddle the design for which is protected by letters patent
No. 10,844, issued September 24, 1878, to Royal E. Whitman for an
improved design for saddles, was made by taking the front half of a
saddle previously
Page 148 U. S. 675
known as the Granger tree, and the rear half of a saddle known
as the Jenifer or Jenifer-McClellan saddle, changing the Granger
tree part so as to have a perpendicular drop of some inches at the
rear of the pommel.
In view of this previous condition of the art, the new and
material thing protected by those letters patent was the sharp drop
of the pommel at the rear, and they were not infringed by the
saddles constructed by the plaintiffs in error.
The Whitman Saddle Company, a corporation organized and existing
under and by virtue of the laws of the State of New York, brought
this bill of complaint in the Circuit Court of the United States
for the District of Connecticut, against Charles D. Smith and
Benjamin A. Bourn, citizens of the State of Connecticut, and doing
business in the City of Hartford, under the firm name and style of
Smith, Bourn & Co., for the alleged infringement of a patent
for a "design for saddles," No. 10,844, dated September 24,
1878.
The circuit court sustained the patent, adjudged that
complainant was entitled to recover of the defendants as
infringers, and rendered a decree perpetually enjoining them, and
for an amount found due for profits, costs, charges, and
disbursements, from which decree an appeal was taken to this Court.
The opinion of Judge Shipman is reported in 38 F. 414.
The specification and claim are as follows:
"Be it known that I, Royal E. Whitman, of Springfield, Hampden
County, State of Massachusetts, have invented an improved design
for saddles, of which the following is a specification:"
"The nature of my design is fully illustrated in the
accompanying photographic picture, to which reference is made."
"Figure I is a side profile view, and Fig. 2 a partial front
view."
"The pommel, B, rises at the fork to a point on, or nearly on, a
horizontal level with the raised and prolonged cantle. The pommel
on its rear side falls nearly perpendicularly for some inches, when
it is joined by the line forming the profile of the seat. The
straight inner side of the pommel (marked
b) is joined at
c by the line, C, of the seat. The line, C, describes
Page 148 U. S. 676
a gradual curve to the center of the seat, from thence gradually
rising to the highest point of the cantle, D. The cantle is defined
in side profile by the lines,
ef, starting from its outer
end in continuous curves, which separate to define the thickness of
the cantle before uniting at a point, g, near the center of the
saddle, the line,
f, forming the outside and rear edge of
the saddle until joined by the line,
h, which, leaving the
line,
f, at an angle, bends to form the rear bearing of
the saddle. The line from the front of the pommel, B, inclines
outward for some distance in a nearly straight line,
m,
before being rounded toward the rear to join the line,
h,
at the point where the stirrup strap is attached, to thus define
the bottom line of the saddle, the outline given by line,
m, from the pommel being the general form of the English
saddletree known as the 'cut back.'"
"A plan view of the saddle shows a center longitudinal slot
extending from pommel to cantle."
"I am aware that portions of the curves employed by me have been
used in the designing of saddles, but when combined with a
longitudinally slotted tree, the lines I employ to give the profile
form a new design for saddles, and giving the general idea in the
front, lower, and rear lines of a sea fowl or vessel modeled upon
the same curves, and by these curves and lines giving the
impression of lightness, grace, and comfort that could not as well
be conveyed by any others, as the impression of comfort is given by
the large amount of bearing surface obtained without undue
elevation above the back of the animal, combined with the large
seat for the rider, and lightness and grace by the small surface of
tree shown in vertical plan, coupled with the form in which it is
presented."
"Now having described my invention, what I claim is:"
"The design for a riding saddle, substantially as shown and
described."
The following is the picture referred to:
Page 148 U. S. 677
image:a
MR. CHIEF JUSTICE FULLER, after stating the facts in the
foregoing language, delivered the opinion of the Court.
Section 4929 of the Revised Statutes provides that
"Any person who, by his own industry, genius, efforts, and
expense, has invented and produced any new and original design for
a manufacture, bust, statue, alto-relievo, or bas-relief; any new
and original design for the printing of woolen, silk, cotton, or
other fabrics; any new and original impression, ornament, pattern,
print, or picture to be printed, painted, cast, or otherwise placed
on or worked into any article of manufacture; or any new, useful,
and original shape or configuration of any article of manufacture,
the same not having been known or used by others before his
invention or production thereof, or patented or described in any
printed publication, may, upon
Page 148 U. S. 678
payment of the fee described, and other due proceedings had, the
same as in cases of inventions or discoveries, obtain a patent
therefor."
The first three of these classes plainly refer to ornament, or
to ornament and utility, and the last to new shapes or forms of
manufactured articles, and it is under the latter clause that this
patent was granted.
In
Gorham Manufacturing Co. v.
White, 14 Wall. 511,
81 U. S. 524,
it was said by this Court, speaking through Mr. Justice Strong,
that the acts of Congress authorizing the granting of patents for
designs contemplated
"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. . . . 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 articles 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.
Manifestly the mode in which those appearances are produced has
very little, if anything, to do with giving increased salableness
to the article. It is the appearance itself which attracts
attention, and calls out favor or dislike. It is the appearance
itself, therefore, no matter by what agency caused, that
constitutes mainly, if not entirely, the contribution to the public
which the law deems worthy of recompense."
This language was used in reference to ornamentation merely, and
moreover the word "useful," which is in section 4929, was not
contained in the act of 1842, under which the patent in
Gorham
Co. v. White was granted, so that now, where a new and
original shape or configuration of an article of manufacture is
claimed, its utility may be also an element for consideration.
Lehnbeuter v. Holthaus, 105 U. S. 94.
Page 148 U. S. 679
But, as remarked by MR. JUSTICE BROWN, then District Judge of
the Eastern District of Michigan, in
Northrup v. Adams, 12
O.G. 430, 2 Bann. & Ard. 567, which was a bill for the
infringement of a design patent for a cheese safe, the law
applicable to design patents
"does not materially differ from that in cases of mechanical
patents, and 'all the regulations and provisions which apply to the
obtaining or protection of patents for inventions or discoveries .
. . shall apply to patents for designs.' Section 4933."
And he added:
"To entitle a party to the benefit of the act, in either case
there must be originality, and the exercise of the inventive
faculty. In the one, there must be novelty and utility; in the
other, originality and beauty. Mere mechanical skill is
insufficient. There must be something akin to genius -- an effort
of the brain as well as the hand. The adaptation of old devices or
forms to new purposes, however convenient, useful, or beautiful
they may be in their new role is not invention."
Many illustrations are referred to, as for instance the use of a
model of the Centennial building for paperweights and inkstands;
the thrusting of a gas pipe through the leg and arm of the statute
of a shepherd boy for the purpose of a drop light; the painting
upon a familiar vase of a copy of Stuart's portrait of Washington
-- none of which was patentable, because the elements of the
combination were old. The shape produced must be the result of
industry, effort, genius, or expense, and new and original as
applied to articles of manufacture.
Foster v. Crossin, 44
F. 62. The exercise of the inventive or originative faculty is
required, and a person cannot be permitted to select an existing
form and simply put it to a new use any more than he can be
permitted to take a patent for the mere double use of a machine.
If, however, the selection and adaptation of an existing form is
more than the exercise of the imitative faculty and the result is
in effect a new creation, the design may be patentable.
In
Jennings v. Kibbe, 10 F. 669, 20 Blatchford 353, MR.
JUSTICE BLATCHFORD, when circuit judge, applied the rule laid down
in
Gorham Manufacturing Co. v. White, supra, stating it
thus, that
"the true test of identity of design is
Page 148 U. S. 680
sameness of appearance -- in other words, sameness of effect
upon the eye; that it is not necessary that the appearance should
be the same to the eye of an expert, and that the test is the eye
of an ordinary observer, the eyes of men generally, of observers of
ordinary acuteness, bringing to the examination of the article upon
which the design has been placed that degree of observation which
men of ordinary intelligence give."
Ripley v. Elson Glass Co., 49 F. 927.
In this case, it appeared from the evidence that among other
trees and saddles that were old in the prior art was one called the
"Granger" tree, which had a cut-back pommel, and a low, broad
cantle, and was well known, and another called the "Jenifer tree,"
or "Jenifer-McClellan" saddle, which was also well known and had a
high, prominent pommel and a high-backed cantle, or hind
protuberance, in the shape of a duck's tail.
The exhibits embrace, among others, a slotted Granger saddle,
the Jenifer-McClelland, the Sullivan-Black-Granger tree, and the
saddle sold by defendants, the latter being substantially the
Granger saddle with the Jenifer cantle.
The saddle design described in the specification differs from
the Granger saddle in the substitution of the Jenifer cantle for
the low, broad cantle of the Granger tree. In other words, the
front half of the Granger and the rear half of the Jenifer, or
Jenifer-McClellan, make up the saddle in question, though it
differs also from the Granger saddle in that it has a nearly
perpendicular drop of some inches at the rear of the pommel -- that
is, distinctly more of a drop than the Granger saddle had.
The experienced judge by whom this case was decided conceded
that the design of the patent in question did show prominent
features of the Granger and Jenifer saddles and united two halves
of old trees, but he said:
"A mechanic may take the legs of one stove and the cap of
another and the door of another and make a new design which had no
element of invention, but it does not follow that the result of the
thought of a mechanic who has fused together two diverse shapes,
which were made upon different principles, so that new lines and
curves and a harmonious and novel whole are
Page 148 U. S. 681
produced, which possesses a new grace, and which has a utility
resultant from the new shape, exhibits no invention."
And he held that this was effected by the patentee, and that the
shape that he produced was therefore patentable. But we cannot
concur in this view.
The evidence established that there were several hundred styles
of saddles or saddletrees belonging to the prior art, and that it
was customary for saddlers to vary the shape and appearance of
saddletrees in numerous ways according to the taste and fancy of
the purchaser. And there was evidence tending to show that the
Granger tree was sometimes made up with an open slot and sometimes
without, and sometimes with the slot covered and padded at the top
and sometimes covered with plain leather, while it clearly appeared
that the Jenifer cantle was used upon a variety of saddles, as was
the open slot. Nothing more was done in this instance (except as
hereafter noted) than to put the two halves of these saddles
together in the exercise of the ordinary skill of workmen of the
trade, and in the way and manner ordinarily done. The presence or
the absence of the central open slot was not material, and we do
not think that the addition of a known cantle to a known saddle, in
view of the fact that such use of the cantle was common, in itself,
involved genius or invention, or produced a patentable design.
There was, however, a difference between the pommel of this saddle
and the pommel of the Granger saddle -- namely, the drop at the
rear of the pommel, which is thus described in the
specification:
"The pommel, on its rear side, falls nearly perpendicularly for
some inches, when it is joined by the line forming the profile of
the seat. The straight inner side of the pommel (marked
b)
is joined at
c by the line, C, of the seat."
The specification further states:
"The line from the front of the pommel, B, inclines outward for
some distance in a nearly straight line,
m, before being
rounded toward the rear to join the line,
h at the point
where the stirrup strap is attached, to thus define the bottom line
of the saddle, the outline given by line,
m, from the
pommel being the general form of the English saddletree known as
the 'cut back.' "
Page 148 U. S. 682
The shape of the front end being old, the sharp drop of the
pommel at the rear seems to constitute what was new and to be
material. Now the saddles of the defendants, while they have the
slight curved drop at the rear of the pommel similar to the Granger
saddle, do not have the accentuated drop of the patent, which
"falls nearly perpendicularly several inches," and has a "straight
inner side." If, therefore, this drop were material to the design
and rendered it patentable as a complete and integral whole, there
was no infringement. As before said, the design of the patent had
two features of difference as compared with the Granger saddle --
one the cantle, the other the drop -- and unless there was
infringement as to the latter, there was none at all, since the
saddle design of the patent does not otherwise differ from the old
saddle with the old cantle added, an addition frequently made.
Moreover, that difference was so marked that in our judgment the
defendant's saddle could not be mistaken for the saddle of the
complainant.
There being no infringement, the decree must be reversed, and
the cause remanded with a direction to dismiss the bill, and it
is
So ordered.
