582

vol. 45.

in;\IertedJ, than a eone, through .the stem of whioh the flanged pipe is thl'iUsti'and the flange itself,:byiturning, caused to enter and rest upon the table of the T. In the one case it will be perceived that the flange of the pipe comes into contact with the walls of the table as soon as turned into position, and so meets resistance to its withdrawal equal to the cohesive power of the: material, of which the nozzle is made; butin the conical recess of the complainant's device the resistance of the overhanging wall is obtained through the medium ofa connecting interlying substance. It seems 'clear that the proper construction of this claim of the complainant's patent limits it to an interior annular recess, which must be conical in fG>rm. The reces8used by the defendants is admittedly rectangular. Under the authority of the Tr'U88 Bridge Case, cited, the defense of noninfringement is made out. This conclusion renders it unnecessary to consider the other defenses set up. The bill is dismissed, with costs.

CAROONE .BARNET

Co. v. RUBBER & CELLULOID et al.

March

24,1891.)

HARNESS

Co.

«(JwcuU (Jourt D. New Jersey.

1. PATBNT8FOR

In an action for infringement of letters patent, individual defendants cannot shield themselves by the plea that the acts complained of were solely the acts of defendant corporation, and that whatever was done by them in manufacturing and selling the patented article was done only in their capacity as officers and agents thereof, and not othel'wise.

ACT-LIABILITY OF OFFICERS.

2. SAME-DESIGN P,,-TE;!iT-;NQVELTY. . Novelty is esseQtial toa desiO'n patent, under'Rev. St. § 4929, and the mere adaptation of old deVices, fo'rms, or designs tanew purposes of ornamentation, however exquisite the result, )ViltnotsustaiJ;l a patent.
&. BAME.

Design patent No. 16;114, of date May 26, 1885, to Samuel E. Tompkins and John F. Goodsell, for a design for the ornamentation of harness, consisting of overlaping and .fiattened spirlU convolutionll.of wire, was anticipated by a patent granted n 1866 to One Picot fOr a 'similar ornamentation of the semicircular combs used by children ,to ,pinbaok the hair from the forehead, and is void. '

."., '

,

E

In Equity, Bill for injunction. Coult &: RoweU, for complainant. J. O. Clayton, for defendants.
GREEN, J.; The bill of complaint in this case was filed to enjoin an alleged infringement of. design patent No. 16,114, granted to Samuel E. Tompkins and JohnF. Goodsell, assignors to the complainant, for a design for the oTll!\mentation of harness. The letters patent bear date May 26, 1885, and the claim ,of the patentees is stated to be" for a design for the ,ornamentation"of harness, consisting of a piece of harness having thereupontbe.6attenedspiral convolutions overlapping and resting upon each other, and placed at. a slight distance from the edge of the piece, so that both the plain edge of the piece and the scalloped edge of the

CAHOONE BARNET MANW!G

CO. tI.BUBBER &

CELLULOID HARNESS CO.

583

spiral show out in contrast;" or, as stated -in tbespecification, "the design consists of a spiral flattened, as shown, so that the individual coils or helices thereof lap over and rest upon each othElr." With the application for letters patent were filed certain drawings more fully illustrating the nature,. object, and use of the Figs. 1 and 3 were edge views of brow-bands of bridles;· Fig. 2 showed a harness rosette; Fig. 4 was the plan of a pad-housing; and Fig. 5 was a bridle-winker; each Ofnamented by the coils of spiral wire, flattened and arranged, as above stated,and illustrating the effect produced by the use of tbedesign in the manner prescribed. The bill charges that the defendants are actually engaged in manufacturing, and in putting on the market for sale, at a lower price than that fixed by the complainant, harness trimmed and ornamtmted with designs, in all material respects a copy of and an infringement upon the design secured to them by letters patent; as heretofore stated; and aninjunction is 'prayed for, with the usual.refetence for computation of damages already$ustained. Thedefendants are the Rubber & Celluloid Harness Trimming: Company, Andrew Albright, Samuel E. Tompkins, and John F. Goodsell. The defendant corporation has an. swered separately, and the individual defendants, Albright, Tompkins, and Goodsell, have filed a joint and several .separate answer. In their answer these individual defendants aver"That the ilsid Albright is the president of the Rubber & Celluloid Harness Trimming Company; that the said Samuel E. TOmpkins owns some of the stock of said company; that the said John F. Goodsell is one of the foremen of said eompany; that the acts complained of in said bilI, jf done at all, were done soleIY by said company, and that none of these defendants, in their capacity as ipdividuals, have ever done anything herein in violation of any rights ofthe complainant; that· whatever they may have done has been done as officer, member, or foreman of the Rnbbel:.& Celluloid Harness Trimming Company, ·w.hich alone is responsible for the wrong, if any there be, plained of." . Under what circumstances and to what extent an officer or a stockholder ·of a corporation can be held personally responsible for infringements of letters patent committed by the corporation are opt:n questions. The adjudications of the courts are contradictory·. In the case of Nwkle 0:>. v. Worthington,13 Fed. R.ep. 392, Judge LOWELL held that an action at law for damages cannot· be :maintained against officers. directors, or shareholders ofa corporation which infringes a patent, even where such persons personally conducted the business which constituted the infringenlent. This opinion was evidently based upon the principle that the artificial person, the corporation alone, is the guilty actor, and that none of its members or officials legally participate, as individuals, in acts done by it. On the other hand, in the case of National Car-Brake Shoe QJ. v. Terre Haute Manuf'g Co., 19 Fed. Rep. 514, Judge WOODS, in charging the jury, substantially held the opposite doctrine, that, in an action at law lor infringment of a patent, albparties who participate in the infringement are liable,although some are simply acting as officers of a 'corporation. All parties who take part in a tort or trespass are liable. Arnan cannot retreat behind a corporation, and escape liability

584

RDEltA.L REPORTER t

vol. 45.

for'B tort in which heaetually' pl1rticipates. And this doctrine has been $anctioned and enforced in GoodYearv. Phelps, 3 Blatchf. 91; Poppanhmen v. Falke, 4 Blatchf. 495; Iowa Barb Steel Wire Co. v. Barbed Wire 00., 30 Fed. Rep. 123; and in other cases which need not be cited. It is based upon the rule that every voluntary perpetrator of a wrongful act of manufacture, use, or sale ofa patented article becomes ipso facto an infringer,and is legally responsible; and it therefore regards di· rectors, and agents employing or authorizing or assenting' to the use of the patented invention as infringers, R11clpersonally responsible to the patentee.' A third class of cases adopts the acceptance of the benefit, pecuniary or otherwise, springing out of the use or the sale of the patented article, or from the infringing act, as furnishing the test of liability. All who derive such benefit are to be reckoned as guilty of the tortious act which makes it possible. The safer rule 'of these, as it seems to me, is the second. Its enforcement will render all agents of a corporation who perform acts of infringement,andall stockholders and directors and other officers who, in the conduot of the ordinary business of the corporation, authorize infringing acts, pers6naUy responsible to the owners of the patent. Such rule is "in harmony with other doctrines of the law, sufficiently protects the patentee, and justly punishes those whose willful acts place them on the same footing with individual infringers." 3 Rob. Pat. §912. The proofs in this cause show that Albright as president of the defendant corporation, Goodsell as and Tompkins as general supervisor 'of the whole of the leather knew of and asr;;ented to and impliedly authorized the manufacture arid sale of harness pearing an ornamentation alleged to be an infringement of complainant's design as patented. Under such circumstances, I do not think they can shield themsl:lhies from responsibility by cnarg!ng the infringing acts, if they are such, to be the acts of the corporation alone. The infringing acts are, indeed, the acts of the defendant corporation j but as well axe they the acts of the individual defendants, by whose authority and direction and assistance the corporation was enabled to and did infringe. The allegations of the bill are well founded. This brings us to the consideration of the. more important question, whether the defendants, oorporate or individual, have heen guilty of any infringement of the rights of the complainant. The letters patent granted to the complainants secure to them -a "design." They were granted under section 4929 of the Revised Statutes. of the United States, which provides "that any person who by his industry, genius, efforts, and expense has invented and produced any new and original design for a manufacture, bust, statue, * * * or any new, useful, or original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or tion thereof, or patented or described in any printed publication, may," etc., "obtain a patent therefor." It is plain from the reading of this section that, to obtain a grant of letters patent for a design, the applicant must show the presence in his design of originality , in some degree at

CAHOONE BARNET MANUF'G CO.

RUBBER & CELLULOID HARNESS <10.

585

least. In other words, appropriation of the invention of another, though the design may disclose does not justify, nor is it to be rewarded by, the issuance of letters patent creating a monopoly. Thus in Theberath v. Trimming 00., 15 Fed. Rep. 246, in speaking of patents for designs, Judge NIXON in this court said: "Patents for designs differ from patents for inventions or discoveries in this respect: that they have reference to appearance rather than utility. Their object is to encourage the arts of decoration more than the invention of use. ful products. A picture or design that merely pleases the eye is a proper subject for such a patent, without regard to the qUestion of utility, which is al· ways an essential ingredient in an invention or discovery patent. But. notwithstanding these differences, all regulations andllrovisions that are applicable to the obtaining or protecting of patents of the latter kind are by section 4933 ofthe Hevised Statutes, made applicable also to design patents."

I think it may be taken as settled that, to sustain a design patent. there must be exhibited· in the production of the design an exercise of the inventive or original faculty 'as clear and of as high degree as is called for in patents for inventioDs or discoveries. In the latter class there must be novelty and utilitYiin the former, beauty and originality. In both, the final production must have been engendered by the exercise of brain :power, and to such an extent that it may be said to be born of, genius. If this be correct, it follows necessarily that the adaptation of old deviCes, or of old forms or designs, though never 80 beautiful, to new purposes or ornamentations" however exquisite the result, is not vention. It is not begotten of originality. And so it is forbidden for one to choose an existing ,design, simply to devote it to a new use, agd, because of .such new use, successfully to claim the benefits of the patent laws. This principle was distinctly affirmed in New York Belting & Packing Co. v.New Jersey Car Spring Co., 30 Fed. Rep. 785. This was an action for infringement of letters patent for a "design for a rubber mat." The patente'e in the description states that, "in accordance with the dedifferent effl'lcts, according to the sign, the 'mat gives, under the relative position of the person looking at it." This was accomplished by stamping upon the rubber mat the design, consisting of corrugations, depressioDl:!, or l'idges in parallel lines, combined or arranged relatively, to produce variegated, kaleidoscopic, moi,'e, stereoscopic, or similar effects. The patent was attacked upon the score of want of novelty. In giVing the opinion of the court, Judge WALLACE ·said:
"It was not new to produce contrasts and variations in light and shade, or stereoscopic effects; by depressions or elevations in the surface of materials. It was old to do this by arranging them in parallel lines, as in wool, plaster. and. corduroy cloth. It is not novelty which will sllstain a desiKn patent to tl'ansferto rubber, or to a rubber mat, an effect or impression on the eye, which has been produced upon other materials or articles by contrast. or variation of light .and shade, The design of this patent is not new, unless it embOllies a new impression or effect produced by an arrangement or configuration of lines, which introdUCes new elements of color or form. This is not claimed. '!

586

"

FEDERAL',REPORTER,

voL 45.

the':patent waathereupoIiheld void for want of novelty. The effeot (!)fthis- opinion is to declare that the application ofadesign to rubber inats,wpichhadbeen,thtwetofore applied in the treatment of articlesof! wool, or ofplaster;ol!1of corduroy cloth; involved no invention whatever; was totally lacking, in novelty. Or, in othenvords, the transfer used, an article ofone material to an. a:rtiQWiof,another transfer may: exquisitely enrich awl beautify, .is,notentitled to :the protection of letters patent. Mere"bul!l:cl.iwork, ·witho\lt brain-work, stands on too low 'a plane to wartant Ol"tci justify' tile grant of . . .. ' . this ',the case # bar, it $eems to me that this patent cannot proofs Illiow. that this. design, e:lUlct in every pa.rticular,:waspateuted aud in use as early as 1866, Theclaim of the complainant's patent is for a "design for ornamentation of harof apiece Of harness havingthereuponflattE'ned spiral convolutions overlapping and resting upon each otber,and placed at a slight from the edge of the piece,rso that:the plain edge of the piece and the escal(!)ped edge of the spiral show out in contrast."In lS66bne Picot patent tot: :design fodong combs. used by children to pin back the haiT from the forehead .and: eyes. The sign: is: a flattened spital ()f wire' attached, ,for ornamentation, to a long semi-flexible rubber· comb, .semicircular, jiJ. shape. An·j nspection of the drawing annexed to the patent shows thisftattened spiral, with coils lapping uponeaoh other,affixed·tothe comb. The spiral is thus described in the specification: ". . IOQps made h'Qmone wire, whichlsberit;and twisted, so as to have of whlchar,e pressed arid (lattened so 'its to form 3SlUooth.andcontinuoils' band. They'are formed 'so neaf each other that their contiguous. edgesi,vm touC'h or lap one, upon the othf'r· in succellsion from right and viae "ersa: the generaLellect. however."ibeing the same. This band or of Ipopsis..placed, the, upper the face of the comb ina with its top edge. and held to .the comb by riv'. ets or pins, which project out therefrom."

a

,

I

.,j,;"

.'An inspection of this design shows ilto be identical with that claimed by the complainants,arld'it certainly:oannotbe admitted that there was involved any inventionih the act of tearing it of! fro:m:the comb of the well and aptly be termed the "brow;.;band" of the child,-and it' to the browiband of the horse's bridle. The i4entipal, alsq, wit9 .Crane's design, .-reprei)entEld by Fig,f 4 in the drawingatta,ched to pis patent forharness trimmingjgranted January 30,l88S; with design,represented by, Fig.' 5 in the: drawing' attached'oo his patent f<»' a 'bridle, 29, 18S0i'.':vith Mingis' desIgn fo1'.a were .· 1$67;' with, hich upt' neqessary. spe¢1fi: '., .,CerQi up,v;elty and. Qrigi»'a:!ity in.:the design is clearly shown. There is, indeed, an adaptation of old designs.to.new

OOMPAGlI"!E UNIVERSEU.. E',J!)U ,.<laNAI' INTEROOEANIQ.UE

11.

BELLON!.

581'

purposes, but that is not invention. Taking the principle, heretofore stated, as the criterion, to-wit, that in apaientable design there runst be exhibited originality and beauty, it is apparent that this patent cannot be sustained. The design, which is itssuhject, may' be' beautiful; it certainly is not novel, nor is it original with the patentee. The injuncgranted is dissolved, and the bill is dismissed, with costs. tion

CoMPAGNIE UNIVERSELLE DUCANAL INTEROCEANIQUE
, {Dl.Btriet

t1.

BEI.LONI et al.1

Oourt, E. D. New Yorl" Marcb 28,1891.}

ADMIRALTY PRACTICll-BECURIT"t UNDll:R ADMI:RALIr"t RULE 53-INSUFll'ICllNT ApIiID.lVIT.

An objection by tbe respondent in a cross-suit to giving security under admiralty rule 53 in the amount of the claim of the libel, on the ground tbat he cannot do so "witbout serious embarrassment to his business, and great expense and sacrifice, " fa insu:lllcient. '

In Admiralty. On motion as to amount of security. Butler, Stillman Hubbard, for claimants. W. J. Marrin and R. D.llenedict, forlibelants.

«

BENEDICT, J. This is a motion taken under the adqliralty rule 53 to obtain aqirectioll from the court as til the amount:ofsecurity which, shall be givE(n by Belloni, the respondent in a cross-libel filed by the Compagnie Vniverselle <;In Canal Interi>pElllniq,ueagainst him in this, court. The damages demanded in the action against Belloni are the sum of $20,000.' It, is sought in this motion to have amount of the security ijxedat not exceeding $6,000. The ground upon which this ap. plication is based is that Belloni cannot give security in the amount, in ' the libel "without serious embarrassment to his business, and great ex.. pense, and sacrifice." In my opinion this affidavit does not show cause for ,direction by the court that the security should be less than the sum demanded in the libel, namely, $20,000.
Benedict., Esq.,

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.,