GOUDY v. HANSEN, 247 F. 782

HALE. District Judge. The plaintiff was the patentee, and is the owner, of United States patent No. 45,108, for “design for font of type.” Under equity rule 29 (198 Fed. xxvi, 115 C. C. A. xxvi), the defendant files a motion that the bill in equity be dismissed, for the reason that the patent on its face is invalid, because the disclosure thereof does not constitute patentable subject-matter, and because no such configuration or ornamentation is shown as would authorize a design patent. He alleges five other causes for dismissal. The motion brings before us the patent itself.

In it the patentee alleges that he has invented a certain new, original, and ornamental design for a font of type; that the drawing shows the face and form of each letter and character. He claims the ornamental design for a font of type, as disclosed in the drawing. That disclosure shows the 26 letters of the alphabet, and the 10 Arabic numerals, as follows: ABCDEFGHIIKLMNOP QR STUVWXYZ 1234567890 The amendment of May 9, 1902, to

section 4929 of the Revised Statutes of the United, States (Comp. St. 1916, § 9475), provides that any person who has invented any new, original, and ornamental design for an

article of manufacture may, subject to certain conditions and limitations stated in the statute, obtain a patent therefor. The original

section 4929 provided that any person who, by his own industry, genius, efforts, and expense, had invented and produced any new and original design, etc., should, under certain- limitations, be protected. The amended

section differs from the original

section in using the word “ornamental” to specify and characterize the features which every design must have, and in omitting the word “useful” from its enumeration. But the presence of usefulness, did not impart patentability to a design, and the absence of usefulness did not take patentability from it. All statutes and regulations which apply to the protection of inventions and discoveries apply to designs. Revised Statutes, § 4933 (Comp. St. 1916, § 9481). In a patent for mechanical devices there must be novelty and utility. In a design patent there must be originality and novelty, as well as beauty.

The same principles of construction apply both to design patents and to mechanical or process patents. There must, therefore, be invention in a design patent, as well as in a mechanical patent. These principles are old, and have been often declared by the courts. Smith v. Whitman Saddle Company, 148 U. S. 674, 13 Sup. Ct. 768, 37 L. Ed. 606 ; Gorham Manufacturing Co. v. White, 14 Wall. 511, 524;, 20 L. Ed. 731; Tubular Rivet & Stud Co. v. Standard Finding Co., 231 Fed. 170, 172, 145 C. C. A. 358; Cahoone v. Rubber Company (C. C.) 45 Fed. 582; Northrup v. Adams, Fed. Cas.

No. 10,328; Walker on Patents (4th Ed.) §§ 20, 22. In American Type Founders' Company v. Damon & Peets (C. C.) 140 Fed. 715, suit was brought upon a design patent for a font of type. Judge Holt, of the District Court of the Second Circuit, held that the patent was void, because it showed no patentable invention, and no such peculiar configuration or ornamentation in the type as would authorize a design patent. In Charles Boldt Co. v. Turner Bros., 199 Fed. 139, 117 C. C.

A. 621, in the Seventh Circuit, it was held that whether or not the device of a design patent meets the requirements of the statutes is a question to be determined from the impression it makes on 'the mind, through the eye of the court, or of the ordinary observer, and not upon the expert; that the provision of the'Constitution was not intended to grant a monopoly merely for the purpose of stimulating manufacturers to make goods look attractive without requiring that the conception shall display a degree of originality and beauty which presupposes inventive thought.

In speaking for the court for fire Seventh Circuit, Judge Kohlsaat observed: “Indeed, a glance at the decisions which have sustained design patents seems to suggest that there may be often more inventive genius displayed by the court in finding invention in design patents than the inventor disclosed in placing it there.” In Keystone Type Foundry v. Portland Publishing Co. (C. C.) 180 Fed. 301, the manufacturers of a peculiar kind of type attempted to restrain a publishing company from, producing type of the same character.

Invoking the law relating to unlawful competition, they sought to monopqlize “the style of typography produced by the type. In the case át bar the plaintiffs are seeking the same end. We agree with the learned judge, who gave'the judgment of the District Court, that design patents contemplated by the statute were never intended to serve such purpose. In this patent the characters and imprints brought before the court appear to have no common characteristics running through the series. The types themselves, from which the imprints are taken, are not illustrated or described in the patent.

The imprints are of the letters of -the alphabet and the Arabic numerals. These letters and numerals have been known to the world for many generations of men. The things attempted to be patented in this case are tire metal blocks, 'with- the letters and figures cut thereon. These blocks, either with of .without the letters, are not things of beauty; they are no riiore patentable than the horseshoe calk. Williams Calk Co. v. Kemerer, 145 Fed. 928,76 C. C. A. 466. They appear to us not to present any feature of design running through them, and appealing to the eye of the observer or of the court.

They do not present sufficient novelty or beauty to constitute a design patent. They cannot be held to be the result of invention or the product of genius. The test of patentability must be the eye of the court, or of the observer, and not the eye of some skilled engraver of type. To apply this test the court may, of course, receive expert testimony.

Whether such testimony is introduced or not, the court must put itself, so far as possible, in the place of the ordinary purchaser of type; and such purchaser would be likely to have some knowledge of the goods with which he deals, although not necessarily an expert knowledge. Gorham Manufacturing Co. v. White, 14 Wall. 511, 528, 20 L. Ed. 731; Phœnix Knitting Works v. Bradley, etc., Co. (C. C.) 181 Fed. 163, 164.

We are constrained to sustain the objections raised by the motion that the patent is invalid, because the disclosure in it does not constitute subject-matter patentable under the patent law, and because it shows no such peculiar configuration or ornamentation in the type as would authorize a design patent. Having come to this conclusion, it is unnecessary to consider the further objections raised by the motion.