Earl Warren: Number 106, Compco Corporation, Petitioner, versus Day-Brite Lighting, Incorporated. Mr. Fallon.
Jerome F. Fallon: Mr. Chief Justice and Associate Justices of this Honorable Court. This is an unfair competition case wherein the petitioner, Compco, was permanently enjoined from selling this particular fixture, to sell fluorescent light fixture and all others that are confusingly similar. This particular fixture is not often seen by the average person because it's an industrial fixture. It's mounted near the ceiling, not quite at the ceiling, of factories. It's arranged for end-to-end installation and it's not unusual for 50 or 100 of these things to be installed in a long line. They come in standard sizes. This is the 48-inch size, the smallest size. It's --
Earl Warren: (Inaudible)
Jerome F. Fallon: Yes, sir, except for this. We have these elongated slots which cast light upwards. So, ordinarily these would be bolted to the trusses, which are the cross A-shaped members that are in a factory so that there maybe 05 or 10 feet between the actual roof and the top of this housing. The components of the fixture include the housing, this rectangular shape portion which includes all of the wiring and the ballasts which are heavy transformers needed to spark the light tubes that are included down below. The light tubes are supported from socket portions which hang down from the housing and then sandwiched in between is the reflector portion. And it is this with which we are concerned primarily because all of the other elements are old or there are substantial differences between what Compco puts out and what the plaintiff below, the respondent here, Day-Brite has in their fixture. Now, the up-lighting fixtures of this type, having these slots became popular in the early 1950s. Shortly after that, they faced a problem in this art because the porcelain coating, this is like we find on sinks and bathtubs, this porcelain enamel, tended to chip and it was determined that the chipping occurred because of -- because the metal, the steel of this reflector, when it was heated during this enameling operation up to about 1600 degrees, tended to warp and twist so as to get out of alignment. And therefore, there were inbred strains, you might say, so that this fixture, when it was handled later on, would tend to chip, the porcelain enamel would pop off. This was solved by the respondent here, Day-Brite, by elongating these ribs so that they came down here to provide additional stiffness for this size, to make this -- to make the side stiff. In all other respects, the reflector is like the prior art that which preceded it. The prior art had the elongated slots. It had the ribs about this far. But in order to overcome this problem of porcelain chipping, especially along the sides, like these ribs, I beg your pardon, they look like grooves here. They're ribs when you look at them from the underside. These -- these ribs were extended. Now, this gave the reflector the resistance that it needed and this point was very heavily emphasized by Day-Brite, the initiator of the elongated ribs. We point out, in our brief, the feature of strength that was emphasized by Day-Brite. On page 11 of our brief, we have this little folded in advertisement of Day-Brite where they show a 358-pound man seated on one of these, showing how stiff and how strong they really are, emphasizing in bold letters the strength. Quite rightly, Day-Brite filed a mechanical patent application on this because this is a functional or a mechanical improvement. They filed this application. It went all the way to the Patent Office and to the Patent Office Board of Appeals and it was turned down because the Patent Office held that this was an obvious expedient, the normal thing someone would do if they wanted to increase the strength of a reflector. A common place example of the use of ribs is in corrugated paperboard. It's very easy to fold paperboard that way, parallel with the length of the corrugations or ribs, but you have to practically crack it in order to fold it the other way. So, that was what was attempted to be done here. There's one type of stiffness afforded by the slip and then the other type of stiffness can keep these sides from warping was provided by elongating these ribs from this point down to there. However, Day-Brite was successful in the Patent Office. They got a design patent. A design patent in contrast to a mechanical patent has to do with the ornamental aspect, the beauty, the aesthetics, the flow of curves and lines. This has to do with any industrial or commercial article. Any article of manufacture can be design patented. That includes a lighting fixture, a dress, a concrete mixer, anything that's got an aesthetic appearance, you -- you can design a patent, the nonfunctional or aesthetic features. And they were successful in convincing the Patent Office that the reflector portion had this requisite ornamentation or distinctiveness as far as design is concerned. Now, this is precisely -- this same aspect of ornamentation or distinctiveness in the aesthetic sense is precisely the same thing that's involved in unfair competition. In this case, that people have always been believed to or permitted to copy the functional aspects. The unfair competition law in the past said, "Well, there may be something wrong if you copy the nonfunctional or the aesthetic aspects because they serve to identify it. You don't have to do that in order to get a better article." However, the design patent was held invalid for two -- for two reasons. First of all, it was held non-inventive over what had gone before. The Court said merely extending these ribs didn't add anything really inventive as far as design is concerned and here we should appreciate that a design patent has to meet the same standards of invention as a mechanical patent. They're all in the same statute, both covered by the same statute. There's a difference that the maximum term of a design patent is 14 years, whereas, the term of a mechanical patent is automatically 17. So, they said that the Patent Office didn't have the best prior art before it. It didn't have anything that showed slots and ribs, at least coming across this far. So, when the court saw this better prior art, it said the design patent was invalid because the Patent Office hadn't seen the best prior art. The court also said that, clearly, the ribs are functional. Therefore, you can't have a design patent on that basis. Now Day-Brite, during the time that this patent was in effect, some five years or so, used this as a very effective sword. They made at least nine rather modest sized competitors, either change their construction or go out of the business entirely, these competitors ranging from Long Island out to Los Angeles. And, about the only thing that was common are these competitors had variations in this design. The one feature in common with all of them was the fact that they made use of this longer rib which was put in there for then purpose of strengthening. As far as we're concerned, the fact that they carried on this extensive litigation program certainly confirms the fact that Day-Brite elected to get its coverage, its protection, its monopoly on this, if you please, through the patent laws. And the law, as we understand it, is that when a patent expires, either prematurely by virtue of invalidation or by virtue of running its term, that particular construction goes into the public domain. That is the condition under which the patent is granted. The patent law specifies that there must be a complete disclosure, a full disclosure, just for the purpose so that at the end of the term, whether it's 14 years for a design patent or 17 years for a mechanical patent, that then the public who has given up this or given an individual this monopoly that then they could have the benefit of it and copy this. And the design patent shows exactly what we have here, give or take some changes in dimensions and sizes of curves and the like. We also see that this matter of patents is exclusely -- exclusively within the federal domain, and it's set down right in the constitution. So, what we have here is, where a person who has a meritorious invention, where the patent has been able to run the full length, the most he can get is 17 years. Here was an improvement not rising to the dignity of invention, yet, these people have a monopoly in perpetuity. So, it seems that the -- the lesser improvement merits the greater protection. Day-Brite is attempting to recapture this monopoly that they lost with the District Court's invalidating this design patent under the guise of unfair competition and to stop Compco from making the precise thing that was dedicated to the public by virtue of the premature expiration of the design patent.
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: No sir.
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: I -- I'd --
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: Yes. This goes back quite a ways. We find, however, that many people have copied this particular fixture, at least nine as we pointed out. The idea of having three slots was quite popular. It seems that it gives the best arrangement of uplighting and strength especially when you incorporate the ribs down.
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: Yes, sir.
Arthur J. Goldberg: Is that right?
Jerome F. Fallon: That's right. Copying, we submit, can be good or bad. It's sort of a loaded word. If we wanted to, we could talk about duplication, product duplication. Copying, if --
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: That's right. Copying, in the ordinary sense, is thought of, say, cribbing from somebody else's examination paper in the classroom. Now, that's -- that's evil. That's bad as we see it because it permits the copyist to pass himself off as something that he really isn't. I mean, he represents to the public that he's attained a standard that he really hasn't. So, that's bad. On the other hand, a few years ago, we had the advent of the hula-hoops. When they first came out, they were $2 or $3 a piece and only children of families of some means could -- could afford them. But there were a bunch of me-too items that came out and pretty soon the price was reduced to 39 cents, 29 cents. Soon they were given away as premiums so that no child, irrespective of the means of his family was denied the pleasure of hula-hooping. So, it depends upon the attitude that you take. If you look at it from the standpoint of the public, who are interested in getting a superior product at a lower price, copying of a product can be a positive good. So, in that sense, we can unload the word a little bit. But what Day-Brite did here in -- oh, as far as this unfair competition aspect is concerned, it was based -- the courts below based it on the fact that there was some trade identity or identity to the trade of this particular fixture, especially the reflector portion of it, that when they saw that, they -- they thought of Day-Brite and it was unfair then for somebody to trade on that so-called reputation. We would point out, however, that they could not have attained any such reputation if there'd be such without the help of the patent because they were constantly harassing people and driving them out of the business. That if they had no patent they would not have been able to achieve whatever semblance of trade identification through this structure which they say they have and which the courts below relied upon. They say that these ribs function sort of in the nature of a trademark.
Potter Stewart: Mr. Fallon.
Jerome F. Fallon: Yes sir?
Potter Stewart: Do I understand from what you've told us so far and particularly right now, that you're whole case depends upon the fact, and it is a fact, that the respondent had a design patent which protected it for some five years in this case?
Jerome F. Fallon: I would hate to argue the case without that. That -- I see that the question that was phrased in the outline does not bring in the fact that there had been a patent. In other words, the question was, to what extent did federal patent laws preclude manufacture of unpatented product from obtaining, under states law of unfair competition, relief against copying of the product? And I'd say that the answer to that must be completely because this is an area of federal domination. Arguing it this way even though this is not found in the constitution, the constitution says that the Congress shall reward inventors. Now, if somebody has come along with something that's less than an invention, by virtue of answering this question some other way, he is then able to get a permanent monopoly whereas somebody who's come up with something worthy is entitled to no more than 17 years.
Potter Stewart: Well, if the respondent in this case had never applied for a design patent and -- and nonetheless sued you in the District Court and let's assume, diversity jurisdiction for unfair competition and hadn't prevailed under the law of unfair competition of Illinois.
Jerome F. Fallon: Yes, sir.
Potter Stewart: You'd have quite a different case, wouldn't you?
Jerome F. Fallon: He'd been very hard put because there were no cases in Illinois that have anything to do with this. The cases of all had to do with trademarks, actual names such as Lady Esther, or maybe packages whether the -- they have a particular stripe design. The law of unfair competition heretofore has had a distinct line of demarcation between it and the patent laws that when we get down to things or the actual economic good, why, that's been something that's been dominated by the -- by the federal laws. And I think that's justified under the antitrust basic principles that we have that we fear any kind of a monopoly in a thing as contrasted to a monopoly in a trademark, a monopoly in the package design.
Potter Stewart: Well now the respondent did prevail, of course, in his unfair competition claim in this case.
Jerome F. Fallon: That's right, Your Honor.
Potter Stewart: And then the court purport to be applying an Illinois law or a federal law --
Jerome F. Fallon: Illinois.
Potter Stewart: -- or just some federal law.
Jerome F. Fallon: Illinois law. That's right.
Potter Stewart: Illinois law.
Jerome F. Fallon: That's right.
Potter Stewart: So, when you say, he would've been hard put to prevail, that's contrary to what happened in this case, isn't it? Here, he prevailed despite the fact that the patent -- he had had a patent which was declared invalid. The case I gave you was -- on the hypothesis there'd never been a patent. So, I suppose a fortiori, in this particular Court at least, he would've prevailed.
Jerome F. Fallon: Except that the telling testimony, I don't think, could have been adduced because, without a patent, if this had been the superior product that we admit that it was, a superior just to a certain extent, not enough to enjoy the patent status, he could not have kept others out of the field. That here was a period of five years or so wherein the patent was used as sword so as to develop something that the courts could rely upon as a way of identifying the product with a particular source. They had in semi-exclusive on this by virtue of the patent. There were some people who did defy the patent and so --
Potter Stewart: So -- so that brings us back, I suppose, to my original question. The answer is, as I -- as you gave originally that your case largely depends upon the fact that the respondent did have a design patent.
Jerome F. Fallon: Yes, Your Honor.
Potter Stewart: I see.
Hugo L. Black: Suppose there had been no patent. Your question, I suppose, would have been whether the state can by naming something unfair competition, give the same advantage to a particular chair, we'll say, that's manufactured as though it had a patent. I don't see why you're dependent on the fact that they tried to get a patent. You may be -- maybe wrong to say that a state can't do that but I suppose a state could do it the same whether they had applied for a patent or haven't applied for a patent.
Jerome F. Fallon: Let's see if I get your question, Mr. Justice Black, that --
Hugo L. Black: But what I get is -- what's -- what I'm talking about is this. We must assume, as I understand what Mr. Justice Stewart was asking, in Illinois law, they say that it's illegal and you'd get damages. Companies that have been manufacturing a certain kind of a -- well, anything, say, if you said chair, something else. I call it a chair. They've advertised it as theirs. Must we not assume that under Illinois law that if a man came along and copied that chair he'd -- he'd violate what they call the fair trade law of the state?
Jerome F. Fallon: That would be the law of unfair competition.
Hugo L. Black: Well, unfair competition, what he was doing. Isn't that what we find here?
Jerome F. Fallon: Yes, aggravate --
Hugo L. Black: It seems to me -- it seems to me that your petition for certiorari may be stated a little better than you have. I thought that when you asked us to take it up, the question you asked was whether they can give him the benefit of the patent under the label -- by labeling it "unfair competition."
Jerome F. Fallon: But, in my presentation here I was relying upon the aggravated situation of the fact that the patent had been in effect.
Hugo L. Black: Well, it shows -- it shows very clearly that they couldn't get a patent.
Jerome F. Fallon: But the --
Hugo L. Black: (Voice Overlap) it shows --
Jerome F. Fallon: But they --
Hugo L. Black: -- very clearly that they couldn't get the benefit of a monopoly through a patent.
Jerome F. Fallon: Well --
Hugo L. Black: That -- it shows that.
Jerome F. Fallon: In -- in that respect --
Hugo L. Black: But it doesn't show -- that doesn't -- certainly it does, does it, whether they can get a monopoly under the states? It might have just as well been called a patent law that covered it, appeals why the government doesn't give it. The government doesn't give a patent, let's say, for a thing like this. Therefore, Illinois can give a patent. They do it under the name of unfair competition.
Jerome F. Fallon: That to me is clearly improper as far as Illinois is concerned. And I pointed out that Illinois -- the Illinois courts speaking -- the Illinois law spoken by the Court of Appeals for the Seventh Circuit based that on the fact that Illinois courts thought that confusion of purchasers was the greatest evil. That if we had two things, irrespective of patent coverage, two things that were substantially identical, why, the public might be confused or defrauded thinking that they were buying one when they should have been getting the other. And that was the basis that the Illinois court, the Court of Appeals in this case decided this case without considering at all the patent aspect. We presented the question saying that it was really a question of balance between two freedoms, the freedom from confusion versus the freedom of competition that the public is interested -- vitally interested in competition because that tends to keep the quality high while driving the price down. In a case like this -- and we said that by virtue of ignoring that balance of interest, the court arrived at the wrong conclusion looking only to the Illinois law that said that, "We don't we feel that any of our customers or any of our citizens should be confused customers." That -- really, all that a patentee or a former patentee in this situation or for that matter, somebody in Illinois who doesn't have a patent, should be free against is somebody else is making a product and then passing it off as his own. In this case, we've tried to avoid that because the carton that it comes in is prominently labeled and the fixture itself bares labels so that --
Speaker: (Inaudible) so as here?
Jerome F. Fallon: Yes, there was that. That -- that they said, not exactly confusion of source, they said that there was actual confusion. I -- I beg your pardon, that's right. They -- they said in effect, that --
Arthur J. Goldberg: Well, isn't that precisely why you say that the (Inaudible)?
Jerome F. Fallon: Right.
Arthur J. Goldberg: And that if --
Jerome F. Fallon: That's it.
Arthur J. Goldberg: You would argue a broader question.
Jerome F. Fallon: Because those findings do trouble us and they trouble the Solicitor General because he said that's the difference these two cases. There's that one finding in there that I don't like. And we say, the very effectiveness with which Day-Brite uses this patent permitted the court to make that finding.
Arthur J. Goldberg: This complicated feature here you don't have in this case (Inaudible).
Jerome F. Fallon: That's right.
Arthur J. Goldberg: So there would be no confusion there among those people.
Jerome F. Fallon: That's right.
Arthur J. Goldberg: Here, it involves a five-year period (Inaudible) cannot be relied upon to sustain the state's theory (Inaudible)
Jerome F. Fallon: That's right.
Hugo L. Black: (Inaudible) that finding? How can a confusion result except for one thing, that it can be held that there'll be a confusion among purchasers? If one manufacturer of a piece of furniture has been manufacturing it for several years and somebody else manufactures precisely the same piece of furniture, is that -- was there any evidence of confusion, except to that extent? Was there any evidence of -- of any deceit practiced?
Jerome F. Fallon: No, sir. I don't think there --
Hugo L. Black: So that what you have is a step to the so-called furniture whether Illinois law can make it illegal so as to subject you for damages for selling a piece of furniture made precisely like a piece of furniture sold by another company for some years and whether Illinois can, by saying that confuses the public, give it the benefit of a patent.
Jerome F. Fallon: That's right, Your Honor. If the Court please, I have about six minutes or so, I'd like to reserve that for the rebuttal.
Earl Warren: Mr. Ooms.
Owne J. Ooms: Mr. Chief Justice, Honorable Associate Justices. Before going into the argument of specifically answering petitioner's statements, I would like to correct the record in two principal areas. Counsel has alluded to the fact that the respondent herein has driven competitors out of business. Has used this as some sort of sword for a number of years. Let me say, first of all, there is nothing in the record to support any such statement. Respondent never drove anyone out of business. It, acting under its rights of any patentee, wrote letters to those who they deemed infringed. Two suits were filed. Consent judgments were entered. Seven other companies ceased to manufacture. The other area I would like to correct is that we do not have here just some functional reflector. There are specific findings in the District Court with respect to this. It is true the court found that the designed patent did not rise to the dignity of invention, as laid down by this Court and especially the AMP case. But, the Court did stay, and I read from Finding of Fact 13, that this --
Speaker: What page are you reading?
Owne J. Ooms: I am reading from the Record 299, Your Honor. The design of the various elements, and this is where the court found there was functionality, namely in opening a writ. The design of the element per se of plaintiff's reflector is functional and it is only in the number, size, and specific placement of those elements that there are nonfunctional features. So we do have nonfunctional features present. This is very important when we come to the question of unfair competition. Furthermore, in Finding 17, the District Court specifically found, and I read from Finding 17 at page 300 of the record, "Neither the addition of reinforcing ribs nor the extension of ribs disclosed in the prior art is invention, although the result in overall appearance of the design of plaintiff's patent is distinctive." Now, what we have here is and has been growing up since probably World War II. That is manufacturers of utilitarian products, one of which this Court had under the guise of the copyright protection in the Mazer versus Stein case in 1954. There has grown up in the industrial world what we call, dress or product identification. Normally in -- merely a chair, as Justice Black points out, or a reflector, the manufacturer wants to have his product identifying him as a source. Now, there's only one way he can do it and that is by putting in features, whether it might be the chair or it maybe a reflector or whatever article of manufacturer. He desires to put features in there so that when the buying public has seen it sufficiently, they will say that is the manufacturer of, in this case, the respondent. That --
Potter Stewart: So, he -- he could put his name on it and -- and do his best to make his product a very good one.
Owne J. Ooms: That is correct, Your Honor. However, you do have the problem, as Justice Goldberg inquired about, these are reflectors hanging from a ceiling and I -- if I, anyone to read a small label saying its Day-Brite besides that, the person who used it does not want to be advertising the products of others. So, what -- the only thing you have left is to build identification into the product per se. That was the purpose behind this reflector, as testified to, as put in the record. It is also cited in our brief precisely. This is what the respondent did. The court found that it did possess nonfunctional features, that it was distinctive. The court also made one very, very salient finding, Finding 24 at the Record 301. It stated that this particular fixture had the capacity to identify the respondent and in fact, it did so identify the respondent. There were witnesses who testified to the same fact. Now counsel here has stated and had agreed, and rightly so, that they copied -- they wanted to copy the best. That meant they wanted to copy the functional, the nonfunctional, the distinctive, the thing that sold this particular type of fixture.
Speaker: (Inaudible)
Owne J. Ooms: Yes, Your Honor.
Hugo L. Black: Is that -- I thought that unless an article, commodity like a piece of furniture was patented, anybody had a right to copy it if they wanted to.
Owne J. Ooms: That is not the law, Your Honor. Even though a patent, whether it be design or mechanical is not present, this does not permit a competitor to slavishly copy it if that particular item does possess what we call "secondary meaning." Now, what do we mean by "secondary meaning"? The courts have laid down the rules and we have cited them in our brief that you may copy the functional features. No one can get a monopoly on that. I wholeheartedly agree. The law has been in that posture for years. The function means that, in this particular case, the rib right here functions to strengthen it. That's the only function of it. However, you can do certain things to an element that functions in a particular way to make it distinctive. Here, it was run all the way down. Again remembering, you have to look at this from the side. It would have no identification and there's nothing in the prior art heretofore that ran beyond just the bare sides of this. There's -- was conflicting testimony that it did add strength. We agree that it did add strength but it also served as a means of identification when you look up at a ceiling. Similarly, by arranging functional elements in a particular manner, just as -- just as we have in everything. You can put four legs on a chair, as Your Honor has used as an illustration, but you can put various scrollings and --
Hugo L. Black: (Inaudible) -- you can put five.
Owne J. Ooms: Pardon? You can put five on them.
Hugo L. Black: (Inaudible) made chairs with five legs. Would everybody else be barred from making chairs with five legs --
Owne J. Ooms: Certainly not.
Hugo L. Black: -- like yours?
Owne J. Ooms: Certainly not.
Hugo L. Black: Suppose you put lines here on the side of that. That would identify it.
Owne J. Ooms: That's correct.
Hugo L. Black: As I understand, what you are arguing here, if you'd put lines here on the side of that, which you know is not a part of its function, somebody else copied that with the lines here that without a patent, they could be held liable in damages.
Owne J. Ooms: If --
Hugo L. Black: As I understand, that's the basis of your argument.
Owne J. Ooms: That is correct. If it is nonfunctional and it has acquired a secondary meaning, yes, Your Honor. That has been the --
Byron R. White: (Inaudible)
Owne J. Ooms: Pardon?
Byron R. White: (Inaudible)
Owne J. Ooms: If it's wholly functional, Your Honor --
Potter Stewart: (Inaudible) its part functional, and part -- part --
Owne J. Ooms: Part nonfunctional, aesthetic --
Potter Stewart: (Inaudible)
Owne J. Ooms: Identification --
Potter Stewart: (Inaudible)
Owne J. Ooms: If -- if he copies the nonfunctional characteristics and here the District Court --
Potter Stewart: Yes, but --
Owne J. Ooms: -- specifically found this. That in the arrangement of the sides, the spacing, the configuration that it has the capacity to identify a particular manufacturer, then it is nonfunctional. That it has become distinctive. This is where the law of unfair competition is not in any conflict whatsoever with the federal supremacy laws of patent which was the primary basis of the petition herein.
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: Yes, sir?
Arthur J. Goldberg: May I ask you this, (Inaudible)
Owne J. Ooms: No sir, there's --
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: There is -- there is not --
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: There is nothing in this record that they palmed it off. But I might add further Your Honor, that palming off is no longer required under the law of the State of Illinois as it is in practically every other state. That is, applying the Erie versus Tompkins doctrine.
Potter Stewart: As it is required or -- in a -- in nearly every other state?
Owne J. Ooms: It is not required.
Potter Stewart: Or is it --
Owne J. Ooms: Palming off is not required.
Potter Stewart: It is not required in (Voice Overlap).
Owne J. Ooms: That is correct, Your Honor.
Potter Stewart: It's not required in Illinois. Now, is that -- is it --
Owne J. Ooms: That is correct.
Potter Stewart: -- the minority rule, do you say, or the majority rule?
Owne J. Ooms: Oh, majority by far, Your Honor.
Potter Stewart: I just want to make sure I understood.
Owne J. Ooms: And even in the new Lanham Act which applies to trademarks, all that is required is that there be likelihood of confusions. Our Court of Appeals of the Seventh Circuit had reiterated this in the Independent Nail case cited in our brief and has had occasion to reiterate it time and time again.
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: That is correct.
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: Usually, it goes through a how -- wholesale outlet and by contractors who take a look at this. They walk into a showroom, and there they are hanging and say "I like that."
Arthur J. Goldberg: (Inaudible)
Owne J. Ooms: Right. And they don't know if it's whose manufacture. A, Y, X, they don't know. They say, "I like that feature." So if you have a particular fixture, a reflector in this case, which is the only source of identification, not this housing, it has nothing at all to do with this lawsuit. If they like it and it has been a good seller, then obviously your competition comes in. Now this they can copy, Your Honor, if it is wholly functional. But if that reflector has built into it, which this District Court has found, has built into it product identification so that these people who are skilled buyers, insofar as they recognize the feature say, "I like that feature -- fixture. I want that fixture." Now, this makes it very easy for him to say, "I've got the same fixture --
Byron R. White: (Inaudible)
Owne J. Ooms: -- for $10 less.
Byron R. White: In your example of the contractor coming into the showroom --
Owne J. Ooms: Yes, sir.
Byron R. White: -- he looks up at the ceiling and he doesn't -- you said, he doesn't know who manufactures it at all. If it had a -- if it actually had acquired identification in his mind, he would say -- he would say, "I want so-and-so's fixtures."
Owne J. Ooms: That is right, Your Honor. And that follows after the initial introduction of a product. Before you -- you can say that it -- I -- particularly identifies a particular source, what you are saying is three or four years after depending upon the success and let us admit, the advertising and promotion of this, particularly one said, "I recognize that as the respondent's fixture. That's what I want." Or he sees it in an ad.
Hugo L. Black: But you're (Inaudible) article, would it -- would you have any copyright on it?
Owne J. Ooms: Now, that's --
Hugo L. Black: A copy -- copyright or a trademark?
Owne J. Ooms: I wouldn't counsel my client to try it for a copyright, although there is some confusion as to --
Hugo L. Black: Some cases had been along that line, but what about a trademark?
Owne J. Ooms: Well, the Court of Appeals, I might say, said that that it acts, because of this trade identification, acts somewhat as a trademark because it is a badge of origin.
Hugo L. Black: But -- but the law has provided a trademark.
Owne J. Ooms: That's right, Your Honor. The law has provided a number of ways. This Court --
Hugo L. Black: This is a -- you could get a monopoly by a patent?
Owne J. Ooms: Yes, sir.
Hugo L. Black: Or by trademark or by copyright.
Owne J. Ooms: That's correct.
Hugo L. Black: What is argued here is that you can get a monopoly on a product, not because somebody's deceived by buying it but you can get a monopoly simply because a man copies it and you've been making it and selling it.
Owne J. Ooms: If it has acquired identification as capable of identification and has acquired a secondary meaning.
Hugo L. Black: You mean as your products?
Owne J. Ooms: That is correct, Your Honor.
Hugo L. Black: That is your product. Well, do you put your name on it?
Owne J. Ooms: Certainly, we put our name on it. Certainly, we put our --
Hugo L. Black: Would you claim that if you put -- with your name on it, nobody can copy it as it is now and sell it?
Owne J. Ooms: Without our name on it, no one can, Your Honor.
Hugo L. Black: Without a -- without a patent, without a copyright, and without a trademark.
Owne J. Ooms: That is correct, under the law of unfair competition. There's nothing --
Byron R. White: (Inaudible)
Owne J. Ooms: Yes sir.
Byron R. White: (Inaudible)
Owne J. Ooms: That -- monopoly, I would accept that word. I mean it has a odious connotation but yes, that is correct and that is the purpose. We are trying to identify our fixtures so that when people purchase this fixture, they can rely on the source of manufacturer. Now --
Arthur J. Goldberg: Are you saying Mr. Ooms, (Inaudible)
Owne J. Ooms: Yes, sir.
Arthur J. Goldberg: Do you say when you copy (Inaudible) fixtures but only the functional aspects.
Owne J. Ooms: That is correct.
Arthur J. Goldberg: And, as we're not claiming a way to stop you from (Inaudible), you're not entitled to a copyright, they you agreed to do it. (Inaudible) they cannot do it if it's incorporated in (Inaudible) elements that are nonfunctional.
Owne J. Ooms: Correct.
Arthur J. Goldberg: That would lead to confusion.
Owne J. Ooms: That is correct.
Arthur J. Goldberg: (Inaudible) copy the design patent that precisely is what you can't -- (Inaudible) when you have a design patent and then the design patent is (Inaudible).
Owne J. Ooms: I think there we're getting to the meat of why we're right here before this Court right now. There seems to be some inference here that because you have obtained a design patent that you cannot also have unfair competition. This is a simple complaint. In two counts, it follows Section 1338, 28 U.S.C. 1338 (b), it follows Forum 17 of the Federal Rules of Civil Procedure. And it accepts the teaching of this Court in Mazer versus Stein in 1954, namely, one count for design patent infringement, one count for unfair competition, each standing alone. Now, these counts arise differently. The count for design patent infringement arises when the design patent issues. That gives us our right under that count against any one we claim to be an infringer. Under unfair competition, that count arises after our product has been put on the market and after it has been exposed to the public a sufficient time so that it becomes identifiable to have a significant meaning of source to the public. Now, there -- they rely sometimes on the same facts, sometimes they rely in different facts. As long as it has the capacity to identify and in fact does so identify, it has acquired this secondary meaning.
Potter Stewart: The petitioner's point is, as I get it, that your product would never have acquired this capacity to identify had it not been for the protection of the design patent which was subsequently held invalid. Because from the very beginning, there could've been very free copying and your client would not have had the protection during that five-year period of a design patent, later found to be invalid, which gave the time and the opportunity for this particular design to be identified exclusively with your client as its manufacturer. Isn't that -- isn't that the (Voice Overlap) --
Owne J. Ooms: Let's be very frank. That -- that's his position but I don't agree with it. I -- I think the design patent was a crutch in the aid but it is not necessary to the cause of action for unfair competition whatsoever.
Potter Stewart: Assuming, assuming there had been no design patent, then the very moments your prior -- product went on the market, anybody could've freely copied it, isn't that true, because at that very moment --
Owne J. Ooms: (Voice Overlap)
Potter Stewart: -- it wouldn't have acquired any identification with anybody?
Owne J. Ooms: Well, there are many decisions that says secondary meaning can be acquired in a matter of two months, two years, or five years. That depends upon the success of the product and how he has or whether he has sufficiently identified it to the public. Now, there's no design patent on the Coca Cola Bottle, yet, I daresay they -- they would have no problem, without it, of stopping anyone from copying it id -- exactly as it is.
Arthur J. Goldberg: The what?
Owne J. Ooms: The Coca Cola Bottle.
Arthur J. Goldberg: Coca Cola.
Owne J. Ooms: I think we're quite familiar. And I think the same thing will be true with regard to the new Michelob bottle of beer which is very, very distinctive. And I'm certain there's no design patent on that. The very fact that a design patent, that the practitioner to whom this manufacture went to and said, "Now, how can I protect my product?" He says, "You can go under the patent statute or you can do nothing because the patent is fraught with this question of what is invention?" And as Justice Jackson said in this Court in the Ausby case, "Only -- the only valid patent is a patent that the Supreme Court can't get its hands on." So, he has to counsel his manufacturing client and he said, "Let's go for a secondary meaning." Now, this is running pretty rampant through the bar as to what they should do. It is a very serious question. This Court never had quite that problem in Mazer versus Stein but it had no hesitancy in stating that even though the lamp which was before it, which was utilitarian, which was ornamental, had both. It had the functional and the nonfunctional features. It had no hesitancy in saying that even though you could've patent it, the fact that he proceeded under the copyright law and obtained his protection, we're not going to say that, because he went under one heading or one federal statute in lieu of another, that that is wrong. As a matter of fact, just recently after the Mazer versus Stein decision here and the Benarous case, a court in New York stated that counsel ought to be complemented upon seeking any type of protection he can on the theory that a court may knock down one and uphold the other. Now, in patents, we have this question of always overcoming what is patentability, what is invention. We do not have that in the copyright law. All it has to do is be original. In the area of unfair competition, we've got to show that it acquired a secondary meaning, which we have here. Now, there's one other point. Most of the cases in petitioner's brief deal only with the fact of expired patents. That is, after the patentee has had his full monopoly under the patent, in this case 14 years. We have never had that in this particular case. We haven't had the 14 years or anything. The constitution says it shall secure, not devest. In this case, and as far as our legal research has been able to ascertain, there has been only one case which has dealt with the difference between the expiration of a patent and a patent which has been judiciously declared invalid. Now, I might say that this patent is not a dead letter right today. It's only invalid insofar as the petitioner here is concerned. And all that the court below -- it didn't say anything else as to anyone else, all that the court below has enjoined him from unfair competition. Now, the Government -- the Government had no problem saying that there was -- the federal patent supremacy law as contrast to the unfair competition because they said, in this particular case, although we have a companion case which follows immediately after, we were entitled under the findings of fact, in the court below, we are entitled to relief. They only stated that we don't believe the relief should be as strong, though it should be less stringent. Now, in that regard, I don't have to remind the Court that the Court here does not sit in function to review findings of fact or the sufficiency of evidence in support of the findings and that's in Southern Power Company versus North Carolina Public Service Company. The Government has suggested to this Court that it remand it so that this particular defendant-petitioner can sufficiently market so that the public will know what is the source of the product. To that, we answer, although we agree with the Governm -- the Government's petition in many respects, we do not believe with the relief or the remand that it suggests for this reason. That he has, that is, the petitioner enjoyed for eight years his acts of unfair competition as found by the District Court and the three Courts of Appeal. We do not believe that by merely labeling now in a proper manner, that he can dissipate the effects of the unfair competition. The law is repeat with -- replete with cases that say a wrongdoer is under a greater obligation than the third party. Now, I believe I mentioned to the Court very briefly that there is the only case that I know of that deals with the particular matter of an expired patent versus an unexpired patent. And that is the Lucien Lelong case at 164 F.2d 395, cited at our -- only in respondent's brief in opposition at pages 7 and 8 where the court said, "If in return for the statutory monopoly or a term the patentee has held thereafter to dedicate his invention to the public, it would naturally follow that where he had never had this monopoly, he has nothing to give up. The situation is one where no patent has ever existed." That is the only pronouncement I can find as the difference between an expired patent. That is, one that has run its full patent monopoly, its term 17 years with regard to a mechanical patent and 14 years with regard to a design patent. Now, I suggest that what respondent has done here is merely follow the teaching that this Court laid down in Mazer versus Stein, a decision in 1954. Namely, that we have elected two causes of action to protect our client's rights, namely, design patent infringement and unfair competition. Now, in the case of Mazer versus Stein, the Court had no problem of a monopoly, although it upheld the copyright there which is good for 28 years plus a renewal of 28 years versus a design patent of a maximum of 14 years. So in that case, the Court upheld, in effect, a monopoly for 56 years versus the fact that he could've proceeded under another federal statute for a period of 14 years. We are doing the same thing here only, instead of applying the copyright, we are applying unfair competition as pronounced by our Court of Appeals and the Illinois court. We can see that, in this respect, we are merely following the teaching what this Court has laid down and what I have cited from the Benarous case. In conclusion, Your Honors, although the petitioner has raised the question that this violates the antitrust law, I submit, I -- I can't find nothing in the record to -- to so label this. It is a mere case of unfair competition. This gentleman decided to copy a product that had identification built into it. A product which the court found as such and the Court of Appeals upheld and the fact that we did have a design patent momentarily and never enjoyed its full term has nothing at all to do with the count under unfair competition. We say we are following the teach -- teaching in Mazer versus Stein and that there is no conflict. Accordingly, we believe that the judgment below should be affirmed in view of this Court's pronouncement that it does not seek to set aside findings of fact where they have been concurred in. Thank you, Your Honors.
Byron R. White: (Inaudible) to avoid being in trouble with the --
Owne J. Ooms: Nonfunctional features. He has to change the non --
Byron R. White: Yes, but you say that the functional features is what has acquired some identifications.
Owne J. Ooms: No, no. You -- you misunderstood me or I misspoke myself, Your Honor. The nonfunctional features have become distinctive and have acquired the secondary meaning as that -- as I read from Finding 13 and 17. The -- the Court of Appeals said if he wanted to follow, if he wanted to follow the functional features, there were many ways that he could've made the same reflector and obtained the same function -- functionality. And they were put in as Exhibits 20 -- plaintiff's Exhibits 28, 29, and 30 in the record which the court had below it. They are not in -- been rep -- reproduced This was an exhibit volume. But I'll be happy to show the -- the design of reflectors. This is one other thing to a court -- the Court of Appeals stated. This petitioner had the opportunity of obtaining the same function by just making it a little bit different, but he chose to exactly copy and therefore he suffered the consequences of --
William J. Brennan, Jr.: (Inaudible) spaced those ribs --
Owne J. Ooms: He could've --
William J. Brennan, Jr.: -- put the --
Owne J. Ooms: He could've put the -- put the ribs differently, he could've spaced them differently, he could've put six of this in. That is the opening. He could've put in five ribs. There are a numerous number and we even had the expert down below make specific drawings showing how it could've been done and still achieve that same functional result.
William J. Brennan, Jr.: Well, do I understand that the identification with your client is as much from the spacing and the --
Owne J. Ooms: Spacing and arrangement.
William J. Brennan, Jr.: -- shaping? Is there anything else?
Owne J. Ooms: And shaping. That is correct, Your Honor.
Byron R. White: But don't we have to -- in each case, we would have to -- have to say what it was that -- about your product that it become identified with the -- in the minds of potential customers?
Owne J. Ooms: The District Court did so state in --
Byron R. White: Yes.
Owne J. Ooms: -- Finding 13.
Byron R. White: Yes, and it maybe, of course, that this changing that spacing wouldn't -- wouldn't dispel the -- in the mind of a customer the -- this identification.
Owne J. Ooms: I think --
Byron R. White: That it'd still be the same -- look -- look like, let's just say --
Owne J. Ooms: Well that -- that strictly would be a question of fact.
Byron R. White: I mean, he has -- that he has to do so much that -- that no customer could -- or potential customer could confuse your product to his.
Owne J. Ooms: So much, I would say, would be in the area of a question of fact, Your Honor. There are certainly ribs and -- and these, what we call uplights or openings put out by Westinghouse and Sylvania. They have the same elements --
Byron R. White: You don't think that --
Owne J. Ooms: -- in it but a different --
Byron R. White: And you don't think that any amount of precautions at the point of sale --
Owne J. Ooms: Oh, it's very --
Byron R. White: -- will -- will suffice?
Owne J. Ooms: Not in this case.
Byron R. White: Let's assume that this -- let's assume that this test of -- that this -- by this opponent of yours had -- had sold only through its own retail outlets, through its own employees and when anybody who went into the place knew exactly what they were getting, knew precisely what they were getting. Your name was over the door and every salesman said, "Remember, now, you're buying X and not Y." That wouldn't be enough from your approach.
Owne J. Ooms: Not with respect to this particular fixture.
Byron R. White: Why wouldn't it, for heaven's sake?
Owne J. Ooms: Why wouldn't it, Your Honor?
Byron R. White: Yes.
Owne J. Ooms: Because they are immediately capitalizing upon identification. Now, in this particular one --
Byron R. White: (Voice Overlap) --
Owne J. Ooms: -- if I may answer my --
Byron R. White: -- will you do it as capitalization?
Owne J. Ooms: I -- I will show how. In this particular case, if the Court please, the company of one of the purchasers of their reflectors had a whole bunch of them and they had been designated to purchase the respondent's reflectors. Something went wrong with several of them and they called the respondent and when they got on a ladder and found out that they were the -- that of the petitioner's. So even though, initially, the sale might have been in all good faith and honesty, you have subsequent problems with this particular matter. And this makes it very easy for them to come in and say, "I've got the same product. I don't have the advertising or the research cost that our competitor has or who's the leader. You can buy mine therefore for $2 cheaper." This isn't the problem, Your Honor --
Byron R. White: But the --
Owne J. Ooms: -- with your --
Byron R. White: It -- it --
Owne J. Ooms: -- question.
Byron R. White: -- sounds like then that -- that really, if someone develops a market for a product, he ought to have it -- have it for himself.
Owne J. Ooms: If he -- if he can fit within the particular principles that I have said with respect to identification and the secondary meaning.
Byron R. White: (Voice Overlap) that's just saying the same thing in a million other words. It's simply the product was identified in the customer's mind.
Owne J. Ooms: No. If they are strictly functional features, Your Honor, then -- then there's no question about it.
Byron R. White: Well, I know --
Owne J. Ooms: He can't ever do this.
Byron R. White: -- but that leaves the rest and what I say is true about the nonfunctional. Oh, you just make a -- then make a product and -- and spend enough money on it and you're going to get it identified in the -- in the public mind, that's for sure.
Byron R. White: You can --
Owne J. Ooms: If you --
Byron R. White: -- develop a market for it.
Owne J. Ooms: If you build in dress or product design into the thing so that it has product identification, then I would agree 100% with Your Honor. Thank you.
Earl Warren: Mr. Fallon.
Jerome F. Fallon: Mr. Chief Justice, if the Court please. Excuse me. First, relative to the case of Mazer versus Stein which had to do with the copyright on the lamp-based statuette decided back in 1953, Mr. --
William J. Brennan, Jr.: Well, was that, a copyright or design patent?
Jerome F. Fallon: Copyright. I beg your -- if I didn't -- If I didn't say copyright, I was wrong.
Potter Stewart: Was not a design patent?
Jerome F. Fallon: Not a design patent. And at page 206, Mr. Justice Reed in speaking for the majority says, "No unfair competition question is presented." So, that has no bearing on this case. They'd -- the case did say that there maybe some conflict between design patents and copyrights, both of them -- both species of industrial property going to the ornamental aspect but they didn't -- the court just didn't decide it at that particular time. This business of secondary meaning has been discussed at some length. Secondary meaning has a historical background relative to trademarks. It comes into focus primarily with word marks of geographical origin or surnames. 60 years ago, any company in Texas who was drilling for oil could call itself "The Texas Company." Through long and exclusive identification with one company, the outfit that makes the Texaco products is known as the Texas Company. In the sphere of automobile manufacturing, the surname Ford has come to mean a single source. Therefore, there is a secondary meaning outside of the usual surname, meaning, for the name Ford. That is what we're talking about as far as secondary meaning is concerned. It's something that's been built up by long and exclusive use. It has to be exclusive. Mr. Ooms' point about the Coke Bottle, I think, is well taken. That has achieved secondary meaning, but it is not a thing that is purchased for its own sake. You're buying the drink, the Coca Cola that's inside. So, therefore, it's a package dress, the same as the trademark. It serves to identify. It isn't the -- the thing that you're buying as such and this is the thrust of our statement that what is being counseled here is a violation of the antitrust laws. No, we say it's out of step with the basic philosophy of the antitrust laws which says that monopolies in things or goods are intolerable -- I beg --
Arthur J. Goldberg: (Inaudible)
Jerome F. Fallon: But here we're talking -- let's get back to the Coke bottle in contrast to this. There is a shape on the bottle that is distinct that we can see or the Haig and Haig Pinch Bottle. I mean, we can see that at a glance but we're not buying that product for the bottle. We're not going to use the bottle ordinarily. We're going to use the -- the contents of it. Here, we are actually using this reflector which is supposed to be the identifying feature. This is the thing. This is not something that's been added as an overlay or a stamping on it just to identify it with a -- with a certain producer. So --
Potter Stewart: Suppose I could sell eau de cologne in -- in Coke bottles, couldn't I? It has to be competitive then, doesn't it?
Jerome F. Fallon: That's a difficult question to ask in view of the holding in Illinois because certain states still say that there has to be direct competition. In this Lady Esther case in Illinois, probably Coca Cola would be able to restrain you under that basis because, here, the cosmetician, the maker of cosmetics, was able to restrain a person who was selling corsets under the name Lady Esther. They said there were some relationship --
Potter Stewart: Well, there is some relation.
Jerome F. Fallon: That -- may -- maybe yours is far enough away that we wouldn't do that. Mr. Ooms brought up the point of the owner of the factory going into the store and seeing one of these fixtures. The thing that's complained of, of course, is the activity of our people that we make it possible for some hanky panky to be carried out. So, we refer to the testimony of the person who's in charge of the selling of the Compco fixtures and he says, the -- this is at page 206 of the record, "The contractor would purchase these the same way. He would look at samples. He would examine them. He would look at catalog sheets. Of course, first, he might -- he would look at the catalog sheet to determine which samples he would like to examine." So, this is a discriminating class of purchasers, people who buy in quantity. The one case of actual confusion that was talked about, there were 573 Compco fixtures mounted in the factory ceiling at about $20 a piece, that's well over a $10,000 sale that, in a case like that, people are going to look at the product pretty carefully So, finding --
William J. Brennan, Jr.: (Inaudible) case, there was confusion, you tell me.
Jerome F. Fallon: Because some workman decided that he should call up Day-Brite rather than Compco to come and repair these fixtures. He -- that's true. He didn't climb up on a ladder and look to see which these were because there were some Day-Brite fixtures in the cafeteria which were 8-feet high and which he could see, whereas, these were 15 to 20 feet high. So, we don't know just the reason for --
Potter Stewart: That evidence doesn't help you, does it?
Jerome F. Fallon: No, it doesn't.
Potter Stewart: Yes.
Jerome F. Fallon: But, on the other hand, that is the only instance of confusion. It wasn't purchaser confusing. It was the confusion of somebody who was delegated with maintaining these in proper working order.
Potter Stewart: Who was -- who was then, presumably, a sophisticated expert in his -- in this limited area?
William J. Brennan, Jr.: Apparently not. Just because a man is in charge of maintenance wouldn't mean that he would be able to know who made these particular products. So, there -- there was no testimony how this came about. There was just a note sent to the plaintiff below. Thank you.