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tline3open  Gorham Co. v. White -- "The Cottage infringment"

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Author Topic:   Gorham Co. v. White -- "The Cottage infringment"
Scott Martin
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iconnumber posted 12-27-2004 12:20 PM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
On July 16,1861 Gorham & Co. obtained a patent (#1,440) for the "cottage pattern" design for the handles of tablespoons and forks.

On January 15, 1867, LeRoy S. White obtained patent (#2,551) for a design of forks and spoons; and in March 31, 1868 another patent (#2,992) for still another design.

Gorham sued White in what became a precedent setting legal case:

    Gorham Co. v. White, 81 U.S. 511, 14 Wall. 511, 20 L. Ed. 731 (1872)

    The basic argument: .....if in the eyes of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, the one first patented is infringed by the other. ......

The Gorham v White is still cited. Try searching the Internet legal sites and you will see it is mentioned often.

I know there is at least one SSF member who is a patent attorney. Maybe they will summarize the legal stuff into a few layman paragraphs.

Here are the patents:


I skimmed the excerpts and found that there were many witnesses from the silver industry. For them it must have been the trial of the century. Seem's like a who's who:

quote:

Much testimony upon the question of infringement was taken; the complainant producing witnesses sworn to by Mr. Tiffany, of the well-known firm of jewelers 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 jeweler, 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 jewelers, 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."

Mr. Barton of Reed & Barton, manufacturers at Taunton, Massachusetts, of Britannia metal and German silver plated ware:
"In many cases the resemblance would mislead ordinary purchasers."

J.T. Bailey, head of the house of Bailey & Co., large dealers in jewelry and silver at Philadelphia:
"I don't think that an ordinary observer would notice any difference on a casual observation. But, to a person skilled in this business, of course there are some small differences. I mean to say, that should an ordinary observer come into my store and take up the two spoons, he would not notice any difference in them, unless desired to examine them critically."

H. D. Morse, of the house of Crosby, Morse & Foss, jewelers and venders of silver in Boston, and whose department had been to a good extent designing:
"They are substantially the same thing so far as appearance goes; substantially alike in regard to general effect, with a slight difference in outline. An ordinary observer would see no difference between them."

James A. Hayden, the selling agent of Holmes, Booth & Haydens, manufacturers of spoons in New York:
"The similarity is so strong that it would not be detected without an examination more careful than is usually made by purchasers of such goods."

Mr. C. L. Tiffany, head of the house of Tiffany & Co., aged 55, and dealing in forks and spoons for more than twenty-five years:
"I have no hesitation in saying they are substantially alike.I think the resemblance would mislead ordinary purchasers; and being asked I certainly might myself be misled by it, if not beforehand told of the difference and my attention particularly called to it."

Edward C. Moore, a member of the firm of Tiffany & Co., a designer:
"There is a substantial difference between the patterns, but the design of all is so nearly alike that ordinary purchasers would be led to mistake the one for the other. It seems to me that is what the pattern of White is made for."

Newell Mason (See: FWG post in this thread 01-31-2007 02:25 PM where he corrects Mason to Matson.), carrying on jewelry business in Chicago and Milwaukee for twenty years at least:
"The patterns are substantially different, but ordinary purchasers, seeing them apart, would mistake one for the other. If the cottage pattern had acquired popularity in the market, White's would derive advantage from that fact."

John Gleave, a die-sinker:
"Ordinary purchasers would be misled by the similarity between the cottage pattern and White's of 1867, but not on a second comparison. If an ordinary purchaser had not a sample of the cottage pattern before him, he would be apt to consider White's of 1867 to be the same with it."

James Whitehouse, a designer in the employ of Tiffany & Co.:
"From my knowledge and experience in the business, I do not regard the designs of White as original, and think that they were suggested by the design of Gorham & Co."

Morse, another of Tiffany & Co.'s designers:
"From my experience as a designer I should think that the designer of White's must have intended to imitate the effect in spirit of the previous design, and yet make a difference. If spoons and forks made after the cottage pattern had obtained a reputation and position in the trade, spoons and forks of White's pattern would find sale by reason of the popularity of the forks and spoons just mentioned. I should think they would be sold for the same thing."

===================

Mr. Henry B. Renwick, aged 52, residing in New York, whose principal occupation was the examination of machinery, inventions, and patents, and who during the last sixteen or seventeen years had frequently been examined as expert in the courts of the United States for various circuits:
"I have examined the spoons and forks made by White, and I have no doubt that they are in all respects substantially identical with the Gorham design. Respecting the design secured by White's patent of 1868, I have some little doubt, owing to the increased concavity of outline in the broad part or head of the handle; but still think the better opinion is that it is within the description and drawing of the Gorham patent."

"By the expressions 'substantially' like, I mean such an identity as would deceive me when going as a purchaser to ask for one spoon, if I should be shown another which was slightly different in minute points either of contour or ornamentation. In the present instance, if I had been shown the cottage patterns, at one end of a counter, and afterwards had been shown White's pattern of 1867, at the other end of the same counter, I should have taken both sets of exhibits to have been of the same design, and I did, in fact, take them so to be until I laid them side by side and compared them minutely."

"I do not think that every change either in contour or in ornamentation makes a substantial difference in the design. For instance, take one of Rogers's statuettes of soldiers, n4 and I do not think the design would be substantially changed so as to evade his patent by substituting a rifle for a musket, or by taking the bayonet off the musket, supposing one existed in the design, or by changing boots for shoes, or vice versa. Or in the case of one of his soldiers drinking, by substituting a round tub for a square trough, or a glass for a tin cup. In a design for a carpet I should think the design was substantially preserved if the main features of the figure were unaltered, and the minor portion were changed by such changes as the substitution of a ring of flowers for a ring of stars, or quatrefoil for a trefoil ornament, and other such changes. In the present instance, the contours of the plaintiff's articles and the articles manufactured by the defendant are not only substantially but almost identically the same. The Gorham articles and the articles manufactured by White all have a threaded or reeded pattern round the edges, all have a slight knob or boss at the point where there are small shoulders marking the dividing line between the stem and head of the handle, and all have knobbed ornaments near the extreme end of the handle and adjacent to the pointed projection which, in all of them, forms that end. There are, no doubt, minor differences; for instance, the Gorham spoon has two threads along the shank where the defendant's have only one, but that one is of nearly equal width with the two and gives the same effect. In the Gorham the knobbed ornament at the shoulders is connected with the outer thread, while in White's it is connected with the inner thread; but these knobbed ornaments in both are in the same place and have the same general effect; it requiring a very minute examination and actual comparison of the spoons side by side, as I am now making, to perceive and describe the distinction. In the Gorham spoons the knobbed ornaments on the inner reed are at the head of the spoon turned upwards and outwards.In White's they are turned downwards and inwards, and the reed is flattened out, but the substantial shape or contour at the end of the spoon, and the ornamentation thereof, by raised ornaments, partly connected and partly unconnected with the threading, is substantially the same in both. Now, I conceive the Gorham patent to be for a design, one element of which is the contour or shape of the handle, and the other the ornamentation thereof. The shapes of all the exhibits, as I have before stated, except that made under White's patent of 1868, are identical, and regarding it, as I have already stated, I think the better opinion is that it is within the line of substantial identity. It might deceive me, I think, in going from one store to another, but not if shown me in the same shop where I had just examined one of the Gorham spoons. With regard to the ornamentation, the substantial characteristics of the design described in the patent are that there shall be a threaded pattern around the edges of the handle, with a small knobbed ornamentation at the shoulders, as before stated; and also at the head of the handle, where it is finished by a pointed projection. I have already said that I find these substantial characteristics in White's spoons, and as I hold the views with regard to substantial identity and design which I have endeavored to express, I therefore state, an before, that the manufactures of White's are without doubt, in my mind, substantially identical with the Gorham design, and that the better opinion is that the design in White's patent of 1868 is in the same category, although altered in degree of concavity at the head of the handle, as I have before stated."

===================

On the part of the defendant an equal number of witnesses were produced, including Henry Ball, the senior member of the well-known firm of Ball, Black & Co., New York City, a silversmith and jeweler, who had been in this business since 1832, and numerous other persons, die-sinkers, engravers, editors of scientific publications, persons engaged in the inspection of designs, solicitors of patents, &c. All these testified, one after the other, and pretty nearly in the same words, that the designs were "substantially different;" one witness that they were "substantially different, both in shape and design." Mr. Edward S. Renwick, especially, an expert, whose reputation for competency is well known, swore positively that the designs represented by all of the White's manufactures were substantially different from the Gorham design, and stated in detail the items of difference; as thus:
"In the Gorham design the stem of the handle, between the shoulders and the bowl, has a second thread upon it, which is parallel with and inside of the boundary thread. No such second thread is found in White's."

He pointed out fifteen differences of this mechanical kind between the Gorham design and White's, patented in 1867, and sixteen differences between the Gorham design and that of White patented in 1868.



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Budguy

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iconnumber posted 12-28-2004 08:34 PM     Click Here to See the Profile for Budguy     Edit/Delete Message   Reply w/Quote
Great research. Who won????

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ahwt

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iconnumber posted 01-01-2005 11:16 AM     Click Here to See the Profile for ahwt     Edit/Delete Message   Reply w/Quote
Gorham won at the Supreme Court as the court reversed the lower court's holding of non-infringement. As pointed out by Scott, the Supreme Court in Gorham Co. v. White set forth the test to determine infringement of a design patent that still stands today. For example, Colida v. Matsushita Electric Corp for America, decided by the United States Court of Appeals for the Federal Circuit (Docket number 04-1348) on November 3, 2004 cited the Gorham case in their opinion. They said:
--The Supreme Court first established the test for infringement of a design patent over a century ago in Gorham Co. v. White, 81 U.S. 511, 528 (1871). The Gorham Co. court held that infringement of a design patent occurs "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."

Normally when an appellate court reverses a lower court decision the case is remanded to the lower court for adjudication in accordance with their decision. Additional evidence is often required. I would imagine in this case Gorham would have been required to introduce testimony from "ordinary observers" instead of the testimony he used from silversmiths in the business of generating or creating new designs.

An interesting article by Charles Spencer Curb and Cooper C. Woodring in the January/February 2004 issue of Silver Magazine clears up what happened on remand. The parties apparently settled the dispute as Rogers & Brother, the owner of the White patent, continued to sell the accused flatware under the name Gothic. It seems that Gorham licensed Rogers & Brother to sell the accused flatware and presumable collected royalties or was otherwise compensated.

Today one could also explore the benefits resulting from copyright in addition to that provided by a design patent. A design patent has a term of 14 years while copyright provides protection for the life of the author plus 70 years.

provides an interesting discussion of the interplay between design patents, copyright and trademarks.

It is of some interest that Gorham does register their copyrights on flatware. Registration Number VA-841-650 is an example of flatware named golden willow that was registered by Lenox, Inc. d.b.a. Gorham on March 3 1997.

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wev
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iconnumber posted 01-01-2005 11:33 AM     Click Here to See the Profile for wev     Edit/Delete Message   Reply w/Quote
Interestingly, the opposite was found in the case of printing types; the court found that the only thing a foundry could claim rights to was the name of the type face; the rival design could be a direct copy as long as it was called Garamont (Linotype) instead of Garamond (ATF).

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ahwt

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iconnumber posted 01-02-2005 12:10 AM     Click Here to See the Profile for ahwt     Edit/Delete Message   Reply w/Quote
The Legal Side
[gone from the internet - totse.com - sf-legal.html, law.syr.edu - spring_2001.asp, mail.sarai.net - 001805.html, smu.edu - Sum98-4-Mezrich.pdf, ssifonts.com - Myths.htm]

The above web sites are some of the sites that provide information about whether or not font design can be protected by copyright. Both the Congress and the Fourth Circuit Court of Appeals in Eltra Corp. v. Ringer decided that analog typeface designs are not now copyright subject matter. Some also discuss Adobe Systems, Inc. v. Southern Software, Inc. and its impact on the software industry. The court held, in Adobe Systems, Inc. v .Southern Software, Inc.1, that copyright law protects "software programs" that create fonts that are distinct typefaces.

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Scott Martin
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iconnumber posted 01-31-2007 11:34 AM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
I was speaking with a friend about this today...
I felt this side by side would be helpful:

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FWG

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iconnumber posted 01-31-2007 02:25 PM     Click Here to See the Profile for FWG     Edit/Delete Message   Reply w/Quote
Note that the "Newell Mason" whose testimony is recorded should be Newell Matson. He was a major spoon-maker here in CNY before moving to the midwest, and his spoons are among the most commonly seen in this region. It is interesting to see him cited here as an authority; he is generally considered around here to be rather uninteresting!

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Scott Martin
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iconnumber posted 01-31-2007 03:17 PM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
Thanks.

I did go back to the original documentation and it is Mason so I put a note in the above.

I suspect you are correct.

Thanks again.

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Paul Lemieux

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iconnumber posted 01-31-2007 04:17 PM     Click Here to See the Profile for Paul Lemieux     Edit/Delete Message   Reply w/Quote
Did the Rogers silverplate company ever get into copyright infringement trouble? I'm sure I've seen at least a half-dozen patterns that practically identical to different Gorham and Whiting patterns. For example, my grandma uses a Rogers silverplate pattern that is virtually indistinguishable from Gorham's Lancaster Rose.

[This message has been edited by Paul Lemieux (edited 01-31-2007).]

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Polly

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iconnumber posted 09-13-2011 11:07 PM     Click Here to See the Profile for Polly     Edit/Delete Message   Reply w/Quote
Has anyone ever seen the White version of this pattern in person? Are there White "cottage" spoons floating around?

I have a set of Gorham Cottage forks from my grandmother, a lovely & graceful pattern. The line drawings of the White version look spiky and ill-proportioned to me. I doubt I would ever confuse them. But I've lived with, and eaten with, the real thing for many years, so I'm probably not the "ordinary observer" they have in mind.

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middletom

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iconnumber posted 09-14-2011 06:43 PM     Click Here to See the Profile for middletom     Edit/Delete Message   Reply w/Quote
One has to remember that those making the decisions in this matter were lawyers. I can see big differences between the Gorham "Cottage" and the White patterns. Lawyers are in the same league with accountants, such as the ones employed by ONC's owner, who, after twelve years, still can't understand why we want to constantly buy silver.

middletom

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Scott Martin
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iconnumber posted 10-11-2016 12:16 PM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
FYI
quote:
From: Gretchen Frazee <gfrazee@newshour.org
Sent: Oct 11, 2016 11:40 AM
To: "'info@smpub.com'" <info@smpub.com
Subject: Photo Request

I am writing a story today for the PBS NewsHour about the Gortham v. White case, and wanted to see if I could use your images on the patents of these spoon handles, if they are, indeed, your photos to distribute. I need to know the answer as soon as possible. Thanks for your time.
http://www.smpub.com/ubb/images/04/gorham-white1.jpg
http://www.smpub.com/ubb/Forum13/HTML/000151.html


Gretchen Frazee
Script Production Assistant
Broadcast News Assistant Coordinator
[email-newshourlogo]
@gretchenfrazee


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Scott Martin
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iconnumber posted 10-11-2016 12:51 PM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
They say they will send us a link/mp4 to the published story.

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Scott Martin
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iconnumber posted 10-12-2016 09:43 AM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
What spoons have to do with the Samsung-Apple patent lawsuit

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asheland

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iconnumber posted 10-12-2016 09:45 AM     Click Here to See the Profile for asheland     Edit/Delete Message   Reply w/Quote
That's pretty cool! I want to see this story when it's finished.

In my latest endeavour to get an example of as many of Gorham's patterns as possible (the early ones at least) I recently found two pieces of Cottage, both from the same original set and with the same engraving.

I find it to be a pleasing pattern. smile

[This message has been edited by asheland (edited 10-12-2016).]

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Scott Martin
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iconnumber posted 10-12-2016 10:41 AM     Click Here to See the Profile for Scott Martin     Edit/Delete Message   Reply w/Quote
I wonder if the court would find this interesting and do they even know about it?
Gibney v. Union

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