CITE: 493 F.2d 1389
CMON: March 1974
PLAIN: In re Yardley
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: March 28, 1974
HISTORY:
Appeal of PTO rejection of design patent application serial No. 21,125.
SUMMARY:
JUDGE: LANE, Judge
DECISION:
This appeal is from the decision of the Patent Office Board of Appeals
affirming the examiner's rejections of the claim in appellant's application
{n1} for an ornamental design for a watch. There are two rejections: (1)
a rejection based on obviousness under 35 USC 103, and (2) a rejection
based on estoppel in view of prior copyright registrations. We Reverse.
The Claimed Design
Appellant's design comprises a novelty watch face with a caricatured figure
thereon. Extended arms and hands serve as the hour and minute hands of the
watch. The drawing in the application is reproduced below.
[Graphic omitted. See illustration in original.]
The sole claim in the application is in the conventional form and it reads
as follows:
The ornamental design for a watch as shown and described.
The Rejections
The first rejection is for obviousness under 35 USC 103 in view of the
single reference Breger, design patent D82,245, issued October 14, 1930.
The prior art Breger design patent discloses a watch dial including hour
numerals and a caricatured figure thereon. It states that the arms and
hands of the figure are carried by the hour hand and the minute hand of
the watch. The Breger design is reproduced below.
[Graphic omitted. See illustration in original.] [*1391]
The examiner's rejection under 35 USC 103 was affirmed by the board.
The second rejection is based on estoppel in view of appellant's prior
copyright registrations. This rejection first appeared in the Examiner's
Answer. The following passage therefrom explains the examiner's position:
Appellant has made of record as attachments to his Brief, copies of
newspaper articles dealing with the subject matter of this application.
Inspection of the photographs therein [reveals] that a copyright has
been claimed on the subject matter disclosed. Further investigation
has revealed the fact that three copyright registrations have in fact
been secured on this subject matter, namely BB 37381, GP 67931 and
GP 67932. In view thereof, and in view of the decision In re Blood
(1928 CD 60; 23 F2d 772), the claim must be rejected on the principle
that while the subject matter might be eligible for protection under
either copyright or design patent, the obtaining of protection under
one constitutes an election of protection, and there is an estoppel
to seek the other. The Blood case followed the decision of De Jonge
& Co. v. Breuker & Kessler Co. (182 F 150) which held in an apparent
first impression case that the owner could not have protection under
both the copyright and design patent acts. Cases dealing with the
similar conflict which followed Blood are Jones Bros. Co. v. J. W.
Underkoffler et al (31 USPQ 197) and Taylor Instrument Cos. v.
Fawley-Brost Co. (59 USPQ 384). The Supreme Court in Mazer v. Stein
(347 US 201; 100 USPQ 325) referred to the cases dealing with this
conflict in a footnote to their denial of a ruling on the question,
since they felt the issue was not before them. Accordingly, the claim
is rejected on the principle of election of protection and estoppel
to seek another.
The newspaper photographs referred to in the Examiner's Answer are
reproduced below:
[Graphic omitted. See illustration in original.]
We note that the first newspaper photograph shows a drawing of a watch
face including the words "SPIRO WATCH", the hour numerals, and the following
printed matter: "[*] 1970 The Novelty Watch Co." and "Pat. pend." (near
the numeral 6). The second newspaper photograph is similar to the first
in these details.
The board affirmed this rejection. In support of the affirmance, the
board's opinion cites and discusses the following twelve cases:
1. Louis De Jonge & Co. v. Breuker & Kessler Co., 182 F. 150
(C.C.S.E.D.Pa. 1910), aff'd on other grounds, 191 F. 35 (3d Cir.
1911), aff'd 235 U.S. 33 (1914).
2. In re Blood, 23 F.2d 772, (D.C. Cir. 1927).
3. Korzybski v. Underwood & Underwood, Inc., 36 F.2d 727,
(2d Cir. 1929).
4. Jones Bros. Co. v. J. W. Underkoffler, 16 F.Supp. 729,
(M.D. Pa. 1936).
5. Taylor Instrument Companies v. Fawley-Brost Co., 139 F.2d 98,
(7th Cir. 1943).
6. William A. Meier Co., Inc. v. Anchor Hocking Corp. 95 F.Supp. 264,
(W.D. Pa. 1951).
7. Stein v. Expert Lamp Co., 96 F.Supp. 97, (N.D. Ill. 1951),
aff'd 188 F.2d 611, (7th Cir. 1951).
8. Ex parte Guild, 98 USPQ 464 (Pat. Off. Bd. App. 1952), aff'd on
other grounds, In re Guild, 40 CCPA 996, 204 F.2d 700, (1953).
9. Rosenthal v. Stein, 205 F.2d 633, (9th Cir. 1953).
10. Mazer v. Stein, 347 U.S. 201, (1954).
11. Vacheron Watches, Inc. v. Benrus Watch Co., Inc., 155 F.Supp. 932,
(S.D.N.Y. 1957), modified 260 F.2d 637, (2d Cir. 1958).
12. In re Deister Concentrator Co., Inc., 48 CCPA 952, 289 F.2d 496,
(1961).
The board's opinion makes it clear that the affirmance was based on In re
Blood, supra, and Ex parte Guild, supra. In addition, the board's opinion
contains the following statement regarding the soundness of the rejection:
Aside from the clearly controlling effect of the cited cases,
we are in agreement with the spirit of the stated rejection. The
laws promulgated under Section 8 of Article I of the Constitution
provide protection for the intellectual products of authors and
inventors. The framers of the Constitution presumably recognized
the difference between the endeavors of authors and inventors,
because they used the word "respective" in reference to their
"writings and discoveries." * * *
OPINION
The Rejection Based on 35 USC 103
The board stated that representation of a human figure, real or
caricatured, is subject to many obvious variations in facial, body,
and dress characteristics. We agree with the board that facial, body,
and dress characteristics may be made prominent and dominant in any
particular choice, but we do not agree that it was obvious under 35 USC
103 to derive appellant's specific design from that shown in the Breger
design patent. While there may be a similarity in concept, it does not
follow that there is a similarity in design or that appellant's design
is necessarily obvious. The board's finding that it is quite evident
that the scope of appellant's design may well approach the figure shown
in Breger is unsupported and without merit. We do agree with the board
that design patents issued to others should not be considered as a reason
for the granting of a design patent on the appellant's application. The
basic consideration in determining the patentability of designs over prior
art is similarity of appearance. See In re Phillips, 50 CCPA 1223, 315 F.2d
943 (1963). We find no similarity of appearance between appellant's design
and the Breger design other than that both relate to watch faces. We
reverse the rejection based on 35 USC 103.
The Rejection Based on Estoppel in View of Prior Copyright Registrations
The second ground of rejection, advanced in the Examiner's Answer and
affirmed by the board, is that three copyright registrations have been
secured on the subject matter of appellant's design, and that both
copyright and design patent protection cannot be obtained for the same
subject matter. The precise nature of the three copyright registrations
is not shown in the record before us, but appellant does not deny that
both copyright protection and design patent protection have been sought
on the subject matter involved.
The only evidence of record indicating what was copyrighted by appellant's
assignee is found in the newspaper photographs, above. Unfortunately, the
quality of the reproduced newspaper photographs is poor, but a copyright
notice ([*] 1970 The Novelty Watch Co.) appears on the drawing of the
watch face. Furthermore, the watch face, as shown by the newspaper
photographs, includes the hour numerals and some words. The latter
features do not appear in the drawing of the instant design patent
application.
Although copyright registrations of appellant's assignee are not of
record, the Examiner's Answer, above, lists the registration numbers as:
Bb 37381, Gp 67931 and Gp 67932. We take judicial notice of the following
facts: that the prefix Bb indicates that the registration is for a
contribution to a periodical manufactured in the United States of America
(see Regulations of the Copyright Office, 37 CFR 202.5; cf. 17 USC 5(b)),
and that the prefix Gp indicates that the registration is for a published
work of art (see Regulations of the Copyright Office, 37 CFR 202.10;
cf. 17 USC 5(g)). Based on the two Gp registrations and the newspaper
photographs of record, we conclude that appellant's assignee has
registered a copyright for the drawing on the watch face (shown in the
newspaper photographs) as a work of art under the authority of 17 USC 5(g).
Turning now to the legal merits of the instant rejection based on estoppel
in view of the prior copyright registrations, the rejection must be
reversed.
We analyze the issue by asking two questions:
(1) Is there an area of overlap wherein a certain type of subject matter is
both "statutory subject matter" under the copyright statute (meaning a type
of subject matter which, by definition, may be copyrighted if the other
statutory conditions and requirements are met) and "statutory subject matter"
under the design patent statute (meaning a type of subject matter which, by
definition, may be patented as a design if the other statutory conditions and
requirements are met)?
(2) If the answer to question (1) is in the affirmative, and if a particular
creation is of that type of subject matter which is within the area of
overlap, may the "author-inventor" secure both a copyright and a design
patent?
We answer both questions in the affirmative for the following reasons.
Under the power granted to the Congress in Art. I, Section 8, clause 8
of the Constitution, the Congress has enacted the copyright statute as
Title 17, United States Code, and the patent statute as Title 35, United
States Code. In the two statutes, the Congress has created an area of
overlap with regard to at least one type of subject matter.
Thus, the Congress has provided that subject matter of the type involved
in the instant appeal is 4 "statutory subject matter" under the copyright
statute and "statutory subject matter" under the design patent statute.
The statutory language clearly shows the intent of Congress.
The copyright statute, 17 USC 5, states:
5. Classification of works for registration
The application for registration shall specify to which of the
following classes the work in which copyright is claimed belongs:
* * *
(g) Works of art; models or designs for works of art.
* * *
The design patent statute, 35 USC 171, states:
171. Patents for designs
Whoever invents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor, subject to
the conditions and requirements of this title. [emphasis added]
The Supreme Court has recognized that an area of overlapping "statutory
subject matter" exists between copyrights and design patents. In Mazer
v. Stein, 347 U.S. 201, 217 (1954), the Court stated:
* * * We do hold that the patentability of the statuettes, fitted
as lamps or unfitted, does not bar copyright as works of art.
Neither the Copyright Statute nor any other says that because a
thing is patentable it may not be copyrighted. We should not so
hold. [footnote omitted]
Subsequently, this court cited Mazer v. Stein in In re Deister
Concentrator Co., Inc., 48 CCPA 952, 961 n. 3, 289 F.2d 496, 500 (1961),
and recognized an area of overlap in these words:
At the present time and especially since Mazer v. Stein, 347 U.S. 201,
there is a certain amount of overlap in the protection available
through design patents and that available by copyright, insofar as
a design may qualify as a "work of art" under 17 USC 5.
The existence of an area of overlap was accepted by the examiner and the
board. Nevertheless, both held that an author-inventor must elect between
securing a copyright or securing a design patent. We disagree.
We believe that the "election of protection" doctrine is in direct conflict
with the clear intent of Congress manifested in the two statutory provisions
quoted above. The Congress has provided that subject matter of the type
involved in this appeal is "statutory subject matter" under the copyright
statute and is "statutory subject matter" under the design patent statute,
but the Congress has not provided that an author-inventor must elect between
securing a copyright or securing a design patent. Therefore, we conclude
that it would be contrary to the intent of Congress to hold that an
author-inventor must elect between the two available modes of securing
exclusive rights.
In Mazer v. Stein, supra, the Supreme Court noted the election of
protection doctrine but did not express any view on it:
As we have held the statuettes here involved copyrightable, we need
not decide the question of their patentability. Though other courts
have passed upon the issue as to whether allowance by the election
of the author or patentee of one bars a grant of the other, we do
not. [emphasis added] [footnote omitted]
Since a design patent had not been secured in the case, the election of
protection issue was not before the Supreme Court.
In re Blood, supra, and Ex parte Guild, supra, directly support the board's
decision upholding the instant rejection based on the election of protection
doctrine. Tracing back in time, Ex parte Guild cites and relies on
In re Blood, and In re Blood in turn cites and relies on Louis De Jonge & Co.
v. Breuker & Kessler Co., supra. In Louis De Jonge, the only issue was one
of copyright validity and no design patent had been secured. Hence, the
statements in Louis De Jonge regarding a mandatory election of protection
were dicta. These prior cases appear to recognize the existence of an
area of overlap, but they say that both copyright and design patent
protection cannot be obtained for the same subject matter. We do not see
any positive legal authority supporting this view. To paraphrase the
Supreme Court in Mazer v. Stein: Neither the copyright statute nor the
patent statute says that because a thing is copyrighted it may not be
patented as a design. We should not so hold.
The brief for the Commissioner of Patents presents the following argument:
There is another reason why the copyright registration secured by
appellant's assignee should bar the grant of a design patent, viz.,
consequent failure of adequate consideration for the grant of a
design patent. In Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,
[1964], the Supreme Court stated with respect to a design patent that
"when the patent expires the monopoly created by it expires, too,
and the right to make the article - including the right to make it
in precisely the shape it carried when patented - passes to the
public." Here, by contrast, that right would be denied to the public,
because appellant's copyright would persist. [footnote omitted]
We agree that the copyright secured by appellant's assignee will outlive
any design patent appellant may secure. The copyright "shall endure for
twenty-eight years from the date of first publication", and it is renewable
"for a further term of twenty-eight years," 17 USC 24; whereas a design
patent has a maximum term of fourteen years, 35 USC 173. But the mere fact
that the copyright will persist beyond the term of any design patent which
may be granted does not provide a sound basis for rejecting appellant's
design patent application.
In the Sears case, the Supreme Court was not thinking of the present fact
situation where similar subject matter is protected by a federal copyright.
This point is shown by the way the Supreme Court stated the question
involved in Sears:
The question in this case is whether a State's unfair competition
law can, consistently with the federal patent laws, impose liability
for or prohibit the copying of an article which is protected by
neither a federal patent nor a copyright. 376 U.S. at 225 [emphasis
added].
The Commissioner's argument based on the "failure of consideration"
concept borrowed from the law of private contracts is inappropriate here.
A patent is not a contract. A patent is "a grant * * * of the right to
exclude others from making, using, or selling the invention throughout
the United States", 35 USC 154 (emphasis added). A patent has "* * * the
attributes of personal property," 35 USC 261 (emphasis added).
Finally, we come to the board's additional ground for affirmance of the
rejection - that "[the] framers of the Constitution presumably recognized
the difference between the endeavors of authors and inventors, because
they used the word 'respective' in reference to their 'writings and
discoveries.'"
We agree with the board's view that the framers of the Constitution
recognized a distinction between "authors" and "inventors" and "writings"
and "discoveries". But, we do not think that the constitutional provision
requires an election. The Congress, through its legislation under the
authority of the Constitution, has interpreted the Constitution as
authorizing an area of overlap where a certain type of creation may be
the subject matter of a copyright and the subject matter of a design
patent. We see nothing in that legislation which is contradictory and
repugnant to the intent of the framers of the Constitution. Congress has
not required an author-inventor to elect between the two modes which it
has provided for securing exclusive rights on the type of subject matter
here involved. If anything, the concurrent availability of both modes
of securing exclusive rights aids in achieving the stated purpose of
the constitutional provision.
In summary, the rejection based on obviousness under 35 USC 103 and the
rejection based on estoppel in view of the prior copyright registrations
are reversed.
REVERSED
FOOTNOTES:
{n1} Design patent application serial No. 21,125 filed January 28, 1970.
The record indicates that The Novelty Watch Company, Inc. is the assignee
of the entire interest in the application.