ERROR to the Circuit Court for the Southern District of New York; the case being thus:
The Patent Act of August 29th, 1842,*fn1
'That any citizen or citizens, &c., who by his, her, or their own industry, genius, efforts. and expense may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woollen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or bas relief, or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell, and vend the same or copies of the same to others, by them to be made, used, and sold, may make application in writing to the Commissioner of Patents expressing such desire, and the commissioner on due proceedings had may grant a patent therefor. The duration of said patent shall be seven years.'
A subsequent act,*fn2
that of March 2d, 1861, re-enacts in substance the same things apparently, and makes some changes in the term of duration of the patent.
With these statutes in force, Gorham & Co., in July, 1861, obtained a patent for a new design for the handles of tablespoons and forks, which under the name of the 'cottage pattern' became extremely popular; the most successful plain pattern, indeed, that had been in the market for many years.*fn3
The pattern is represented, further on, in the lefthand design on page 521. Gorham & Co. subsequently transferred their patent to the Gorham Manufacturing Company.
In the year 1867 one White obtained a patent for a design which he alleged to be original with him for the same things; the handles, namely, of forks and spoons; and in 1868 a patent for still another design. Both of his designs are shown on the page already mentioned, alongside of the cottage pattern and to its right hand on the page.
Manufacturing and selling quantities of spoons and forks of these last two patterns, White interfered largely with the interests of the Gorham Manufacturing Company, and that company accordingly filed a bill in the court below to enjoin his making and selling spoons and forks under either of his patents. The validity of the patent held by the Gorham Company was not denied, nor was it controverted that the defendant had sold spoons and forks which had upon them designs bearing some resemblance to the design described in the patent held by the company. But it was contended. that none of the designs on these articles thus sold were substantially the same as the design covered by the patent held by the company, and that they were independent of anything secured by that patent. The sole question, therefore, was one of fact. Had there been an infringement? Were the designs used by the defendant substantially the same as that owned by the complainants?
Much testimony upon the question of infringement was taken; the complainant producing witnesses sworn to by Mr. Tiffany, of the well-known firm of jewellers and silver smiths in New York, as representative men 'in the trade under consideration, unexceptionable in every respect.'
Mr. Cook, of the firm of Tiffany & Co., said:
'I should say that the patterns are substantially like one another. I think that an ordinary purchaser would be likely to take one for the other.'
E. W. Sperry, a manufacturer of forks and spoons for thirty-seven years:
'I should say that the pattern of White of 1867 was certainly calculated to deceive any one but an expert. Any person seeing one of the Gorham spoons or forks at one end of the table, and one of White's at the other end, could not tell the difference between them; not one man in fifty.'
Martin Smith, of Detroit, a merchant jeweller, dealing for ten years in silver spoons and forks:
'In my judgment, if the White pattern were placed in a store different from that in which they had before seen the cottage pattern, seven out of ten customers who buy silverware, would consider it the same pattern.'
Theodore Starr, of the Brooklyn firm of Starr & Marcus, merchant jewellers, eight years in business:
'The essential features I consider the same. The resemblance is such as would mislead ordinary purchasers.'
H. H. Hayden, of New York, engaged for several years in manufacturing and selling metal goods:
'The two designs are substantially alike. In my opinion they would mislead, and would be considered one and the same pattern by the trade; by the trade, I mean customers as well as manufacturers.'
Alfred Brabrook, agent of Reed & Barton, manufacturers at Taunton, Massachusetts, of Britannia metal and ...