The inventions protected by letters patent No. 203,604, granted
to Charles E. Dobson, May 14, 1878, or by letters patent No.
249,321, granted to Henry C. Dobson, November 8, 1881, both for
improvements in banjos exhibit patentable novelty, but they are not
infringed by instruments constructed according to the specification
and claims in letters patent 253,849, granted to Edwin I. Cubley,
February 21, 1882.
In equity to prevent the infringement of letters patent. The
case is stated in the opinion.
MR. JUSTICE SHIRAS delivered the opinion of the Court.
This case comes here on appeal from the Circuit Court of the
United States for the Southern District of New York, whose decree
dismissed complainant's bill charging the defendants
Page 149 U. S. 118
with infringing letters patent of the United States, No.
203,604, granted to Charles E. Dobson, May 14, 1876, and letters
patent No. 249,321, granted to Henry C. Dobson, November 8, 1881,
both being for improvements in banjos.
The bill discloses that the several letters patent so as
aforesaid issued to Charles E. Dobson and to Henry C. Dobson, by
certain assignments in writing, became vested in the complainant,
Catharine L. Dobson, and avers an infringement by the defendants,
E. I. Cubley and George Van Zandt, of her rights under said letters
patent.
The defendants, by their answer, admit that letters patent were
issued, as alleged in the bill, to Charles E. Dobson and Henry C.
Dobson, but deny that said patentees were original inventors of the
devices described therein, and allege that each of the combinations
or devices claimed in said several letters patent was a mere
aggregation of mechanical features well known in the art, and hence
contend that the claims for said devices should be declared null
and void.
The answer further sets up that the defendant Edwin I. Cubley
was himself the original inventor of certain improvements in banjos
and other musical instruments, for which letters patent No. 253,849
were, on the 21st of February, 1882, granted to him, under which
the defendants were carrying on the manufacture and sale of banjos,
and denies that such manufacture and sale were infringements of any
supposed or alleged rights of complainant, as assignee of the
several letters patent described in the said bill.
Replication was duly filed, testimony taken, and, after hearing,
the decree dismissing the bill of complaint was rendered.
The banjo is described as a musical instrument of the guitar
class, having a neck with or without frets, and a circular body
covered in front with tightly stretched parchment. It has from five
to nine strings, of which the melody string, the highest in pitch,
but placed outside of the lowest of the others, is played by the
thumb of the performer. As in the guitar, the pitch of the strings
is fixed by stopping them with the left hand, while the right hand
produces the tone by plucking or striking. (The Century Dictionary,
article Banjo.)
Page 149 U. S. 119
The banjo of the Charles E. Dobson patent contained a
dome-shaped ring, composed of metal, interposed between the
parchment and a wooden rim, and what is claimed as new is this
dome-shaped ring, in combination with the wooden rim and parchment
head. The advantages claimed are that the rounded shape of the ring
causes less wear of the parchment head than the more angular corner
or edge previously in use, and that such combination materially
improves the tone or resonance.
The banjo of Henry C. Dobson has also a metal ring, but the ring
is formed with two downwardly projecting flanges, interposed
between the parchment head and a rim composed of wood and metal.
The outer flange passes down outside of the ring, and the inner one
projects down inside the ring, and is free from contact with other
parts of the instrument, so as to be capable of unrestrained
vibration, and it is claimed that the effect is to give a clear,
bell-like, ringing tone to the instrument.
The ring is an element of both of the Dobson patents, and its
peculiar form is essential in each invention in producing the
bell-like notes which are characteristic of the instruments. These
effects are varied in each by the dimensions and form of the ring,
and in the Henry C. Dobson patent the flanges and the combination
of wood and metal in the rim are distinctive features.
The Cubley banjo has no ring. The parchment rests directly on
the rim, as was the case with the old form of banjo. The device
claimed as new is in making the shell entirely of sheet metal, and
the advantages claimed are first, mechanical, in strengthening the
shell by shaping it so that the strain of the parchment will come
upon the metal in the line of its greatest resistance, and thus
maintain the shape of a true circle; secondly, in beautifying the
appearance of the shell by covering from view the internal
attachments by which the straining device is fastened upon the
outer side and providing a continuous surface, unbroken and with
rounded corners, capable of being finely and easily polished; and
thirdly to strengthen and render more melodious the tone of the
instrument.
Page 149 U. S. 120
Conceding that the Dobson devices involve a patentable novelty,
we are of the opinion that the Cubley patent does not infringe
either of these, as it has no ring upon which the parchment rests.
In the Cubley banjo, the parchment rests directly upon the rim,
which consists of a metallic shell formed by turning over both
edges of a piece of sheet metal and constituting a hollow rim or
case, the effect of which is to impart a different musical quality
to the instrument. This difference is doubtless accentuated by
discarding altogether the wooden rim of the Dobson banjo. The
devices are so dissimilar in their design and functions that we are
of the opinion that the latter cannot be deemed an infringement of
the former.
These differences in mechanical structure result in a noticeable
difference in the tones of the instruments, so much so as to call
for a different kind of trade.
Arthur C. Fraser, the complainant's expert, admits that in the
Dobson patents, the ring and rim are two distinct parts, while in
the defendants' banjo, they are actually integral. He claims that
this feature of construction necessitates that the rim should be of
metal, which, as compared with a wooden rim, gives the instrument
what he calls "an inferior quality of tone." He says that,
"assuming that both banjos were made of the same grade of
excellence, so far as workmanship and finish are concerned, it
seems to me that the Dobson banjo would be considerably superior to
the defendants' banjo in the fact, chiefly, that it is constructed
with a wooden rim, whereas defendants' banjo has a metal rim. The
rim of a banjo is essentially its sounding box, and it is well
known that wood is more resonant and is in every way a better
material for a sounding box than metal, giving a louder sound and a
fuller, deeper, and richer quality than is given out by metal. A
metal sounding box gives out a light, thin, wiry, or tinny sound as
compared with the full, sonorous vibration resulting from a wooden
sounding box."
He further says:
"A brass plate as thick as that in the ring in the Dobson banjo
would give a much louder and clearer ringing tone than a similar
plate made as thin as the flange of the ring in the defendants'
banjo. . . . The sound produced by the Dobson banjo is
Page 149 U. S. 121
much louder, and the tone more full, clear, resonant, and
brilliant than of defendants' banjo, which is comparatively weak,
colorless, and sharp or tinny."
William Becker, an expert called by the defendants, testified
that
"I think the Dobson banjos are more adopted for large audiences,
ballrooms, theaters, etc., while the Cubley banjo would better meet
the trade for home amusement and parlor use."
And again: "It is well known that wood-rim banjos covered with
metal have a sharp, shrill tone, where a hollow-shell rim will give
a metal tone."
George Van Zandt, a witness for the defendants, testified
that
"the tone of a banjo is a very essential feature in reference to
its value as a musical instrument, but there are various kinds of
tones, and for some uses one kind may be preferred to another, and
for other uses
vice versa. For a concert room, a strong,
loud tone is desirable, and for a smaller room a soft and mellow
tone would be preferred. The tone of the Dobson banjo is a loud,
strong one, especially in the high notes. The one of the Cubley
banjo is softer and more enduring, especially in the lower notes.
For accompaniment and for use in the parlor by amateurs, probably
the Cubley banjo would be preferred. By professional players, for
brilliant effects, perhaps the Dobson banjo would be the best."
Without expatiating on this "strange difference twixt
Tweedle-dum and Tweedle-dee," we think we see in the testimony of
the respective witnesses on the merits of their favorite
instruments a recognition of an obvious difference in the quality
and characteristics of their tones. Differing, then, as we have
seen they do, in their mechanical devices and in the material of
the sounding boxes, and in the quality and character of their
musical effects, we conclude that the Cubley banjo cannot be deemed
an infringement of either of the Dobson banjos.
The contention that the Dobson banjos exhibit no patentable
novelty has not been much pressed. At all events, we think that
their additional devices are obvious improvements, and justify the
granting of letters patent.
As the court below reached the same conclusion, 39 F. 276, its
decree is
Affirmed.