for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended. Thus, the shape of a bottle or other container may be functional though a different bottle or container may hold the goods equally well. A candy box in the shape of a heart may be functional, because of its significance as a gift to a beloved one, while a box of a different shape or the form in which a ribbon is tied around the box may not be functional. Or, a distinctive printing type face may be functional though the print from a different type may be read equally well. The determination whether or not such features are functional depends upon the question of fact, whether prohibition of imitation by others will deprive the others of something which will substantially hinder them in competition. A feature is nonfunctional if, when omitted, nothing of substantial value in the goods is lost." Restatement of the Law of Torts, Chapt. 35, Sec. 742.
While the question is by no means free from doubt, I am of the opinion that the design of an electric lighting fixture, so far as it relates to those general features which are here imitated, is functional. For the plaintiff it can well be said that in creating his fixture, while he may not have exercised invention, he unquestionably did exercise originality and artistic sense of a high order.
It is true that the dominating distinctive feature of the plaintiff's design is the shape and proportioning of the bowl, and in Luminous Unit Co. v. Williamson & Co., D.C., 241 F. 265, it was held that the shape of a bowl in an electric lighting fixture is a nonfunctional feature. However, it is clear that the structure in that case was of considerably more elaborate design than the plaintiff's in this case, and the opinion of the court indicates that the defendant copied more than merely shape, also reproducing the "markings" and "number and style of hangers." [Page 269.]
It is also true that the defendant in this case committed himself to the proposition that the shape of the bowl is nonfunctional. But it is not quite fair to the defendant to leave that statement without saying that this position was taken in the part of the case which involved the operation of a mechanical patent and obviously was limited to mechanical function. I do not think that the record estops the defendant from arguing that the shape of the bowl is functional in the sense in which the Restatement of the Law defines that term.
The trouble is that, given an efficient fixture, the design is what really sells it, and the defendant could not possibly, in my judgment, produce something notably different from the plaintiff's without losing something of very substantial value and affecting the performance in the sense that presenting an attractive appearance is part of its performance -- as it undoubtedly is. In other words, the ensemble is so distinctive that any combination of shallow conical bowl, slender rod and plain, long socket cover is bound to be confusingly similar to the plaintiff's unless it is somehow defaced. You simply cannot take it and hang a fringe around the bowl or paint a design on it which will show up strongly when the bowl is lighted, without ruining it as a sales proposition. That means that the defendant or anyone else who wants to make a mechanically good fixture designed on simple, modern lines is practically driven to the shallow hemisphere or dish shape, the rather awkward helmet shape, or something else not nearly as satisfactory as the shallow cone. That, in turn, means that the plaintiff really gets the monopoly which he is asking under his patent.
The facts stated in the foregoing opinion may be taken as special findings of fact. The following conclusions of law are separately stated:
1. All the claims of the patent in suit, U.S. No. 1,957,192, are invalid for the reason that they show no inventive step or patentable novelty over the prior art.
2. All the claims, if valid, would be infringed by the accused structure.
3. The plaintiff is not entitled to relief by reason of the defendant's imitation of the general appearance of his structure.
The bill may be dismissed with costs.
The testimony of the expert is interesting in this regard. After stating the dilemma which was created by the large size bulbs -- that of the choice between raising the edges of the bowl, thus losing efficiency, and making the bowl shallower, thus bringing the bottom close to the light and getting a bright spot of transmitted light -- he says that "Ainsworth introduced two major and one minor elements which in combination enabled us to escape the dilemma in which we are." The first major feature was the lengthening of the husk or docket cover. this, it will be noted, is not mentioned in any of the claims. The minor element was "the use of a small stem which while not perhaps in the legal sense novel in the art was certainly novel with respect to the general use in the art." This again is not mentioned in the claims, and he went on to say, "* * * it was substantially novel, but it was an element affecting appearance for all practical purposes rather than affecting the matter of performance."
This leaves the second larger feature as the only inventive step out of the "dilemma" which is even mentioned in the claim. The testimony as to that is, "The second major factor was the thickening of the bowl near the apex, or, indeed at all points where it is near the lamp. That thickening, per se, was not new, but the thickening as applied to the bowl, a translucent bowl of this general character was to the best of my knowledge and belief new." This testimony would seem to entirely justify the view stated in the above opinion that the plaintiff rests his case for patentability upon the thickening of the bowl to prevent undue brightness where the lamp comes near it.
© 1992-2004 VersusLaw Inc.