Music Trade Review

Music Trade Review -- © mbsi.org, arcade-museum.com -- digitized with support from namm.org
DECEMBER 11,
1920
THE
MUSIC
TRADE
REVIEW
PROTECTING MUSICAL INSTRUMENT
DESIGNS BY MEANS OF PA TENTS
An Interpretation of and Some Specific Decisions Based Upon the Patent Laws Which Apply to the
Design of Musical Instruments, Written by Waldon Fawcett
Members of the music trade have an unsus-
pected'reason for feeling an especial interest in
the outcome of the proposal now before Con-
gress to increase the expert examining staff at
the United States Patent Office. It has been no
secret in the industry that new trade projects
have been held back because our overworked
and undermanned clearing house for inventions
has been slow in passing upon applications for
mechanical patents covering the moving parts
of musical instruments. But only a small frac-
tion of the trade realizes that it has been in
lesser sense a brake upon the progress of the
industry that the Patent Office has been dis-
tressingly tardy in weighing claims for what are
known as "design patents."
The fact of the matter is that, thanks to the
shortage of specialists qualified to sit as censors,
the division of the Patent Office that grants
manufacturing monopolies for original designs
for musical instrument cases, etc., has been
even farther behind than the institution as a
whole. Literally the work is months behind
schedule. The Commissioner of Patents made
the need fpr more help in this quarter the sub-
ject of a special appeal to Congress some months
ago, but the national legislature was tempted to
postpone action on the theory that the whole
force of the Patent Office would be strengthened
this Winter and that, incidentally, the acute sit-
uation with respect to the certification of unique
designs would be solved.
Music Industries Awakening to Situation
That the music industries are but just awaken-
ing to the importance of protecting distinctive
cases, cabinets, benches, etc., against intentional
or unintentional imitation or duplication is at-
tested by the number of firms in the trade that
have lately taken out, at one swoop, as it. were,
patents covering their entire range of models.
As an illustration—one among many—we find
a Chicago manufacturer of phonographs taking
out, only a few weeks ago, a battery of patents
"covering the ornamental designs of this firm's
respective sound-reproducing cabinets—period
models as well as new contributions to the
category of "uprights." Many firms in the trade,
not content with isolating their ensemble de-
signs, have taken out patents on grilles, tone
control devices, innovations in the form of piano
legs and other details.
As the patenting of the designs of musical in-
strument cases becomes more general in the in-
dustry we may expect that such evidence of
originality of conception will be more extensively
played up as a "talking point." The term
"patented" has long been a word to conjure
with in the music trades, as in other commercial
and industrial fields, but heretofore music trades-
men, in invoking the prestige of patents, have
usually had reference to mechanical patents.
When you stop to realize it, though, the design
patent comes closer to the elements of salesman-
ship than its mechanical counterpart. Upon the
latter may depend something of the service that
an instrument will give its owner; yea, and
something of its tone, perhaps, but design
patents give the measure of the appearance of
an instrument and every purveyor of musical
wares knows that "appearances count."
There Must Be Some Originality
Some skeptics in music trade circles have re-
mained lukewarm in the face of the new trend
to design patenting because of a cynical theory
that "any old thing" can be made the subject
of a design patent. In all fairness, this sus-
picion that there is no insistence upon "in-
spiration" as the prerequisite of a design patent
is not justified. To be sure, design patents cover
features of musical instruments that are orna-
mental rather than utilitarian but in order to win
one of Uncle Sam's testimonials to originality
there must be a new appearance created by in-
ventive process and serving the purpose of em-
bellishment. The umpires at Washington even
undertake to draw a distinction between novelty
and invention and it has on more than one oc-
casion been held that minor differences or de-
partures in the outline of a musical instrument
case, such as might suggest themselves to any
resourceful workman, could not be accepted as
basis for design patents.
One of the limitations of the design patent
system that has significance in the piano and
organ held and other long-established sections
of the music trade is that which denies the pro-
tection of design patents to fresh productions
that are essentially nothing more than adapta-
tions of old designs, long known in the art or
the industry. Mere changes in size, color or
material will not support a claim for a design
patent, nor will a regrouping or rearrangement
of devices and ornamental forms long known
in the music industries unless, mayhap, the
adapter has so completely disguised and rejuv-
enated his mediums of adornment that.the ef-
fect produced is that of a new entrant.
An Interesting Precedent
That there is, however, no disposition on the
part of judicial arbiters to insist upon radical
innovations in design in order to render valid a
patent of this kind was well indicated by the
precedent established by the Federal Court of
Appeals that said the final word in a piano trade
contest some time ago. The Appeals Court in
this instance decreed that the patent which served
as a bone of contention was valid, although the
judges observed that the casual observer would
hardly be able to distinguish the patented de-
sign from some of the designs shown "in the
prior art," that is, in the pattern panorama of
the piano industry. But because there were
some characteristic features of the design which
distinguished it from the "prior art" the official
referees were willing to concede that the piano
design involved was entitled to a niche of its
own. That some of the embodied features were
'"old" and had previously appeared in other piano
designs was accounted no harm so long as there
was sufficient new matter to invest the compo-
site design with distinct individuality.
This same proceeding for the purpose of col-
lecting damages for infringement of a patented
design brought from the Appeals Court a rul-
ing of no little interest to piano tradesmen.
The evidence having established the fact that
the competitor's piano design imparted to the
minds of prospects and customers the same gen-
eral idea of ornamentation as did that of the
creator of the design and holder of the patent,
there was nothing to do but make an award
of damages. The U. S. court that first under-
took to give redress allowed the firm whose
patent was infringed the profits from the sale
of the imitative pianos. The Court of Appeals
modified this, reasoning that inasmuch as the
patent covered only the piano case and not the
piano it was but fair to restrict the award to the
profits on the cases alone. One of the judges
who reviewed the case dissented even from the
modified decision. Taking the slant of everyday
business, he held that the value of a design pat-
ent was as a "seller" of the article it covered.
Another U. S. Circuit Court of Appeals was
called upon to pass upon the method of ac-
counting profits in this same case ere the inci-
dent was closed. The court, by a majority opin-
ion, held that the profits allowed the complain-
ant whose design had been infringed should bear
the same relation to the entire profits made by
the defendant as the cost of the manufacture of
the case bore to the cost of the complete piano.
Judging from correspondence that has come
to Washington from quarters within the trade,
some musical instrument manufacturers and
marketers have refrained from taking out de-
sign patents under the impression that the
monopoly thus conferred can apply only to the
ornamentation upon an article of manufacture
rather than to the article of manufacture itself,
as that article is manufactured and produced.
It is unjust to thus narrowly appraise the scope
of design patent protection. There are prece-
dents aplenty to prove that design patents may
be taken out on articles which have a useful
mechanical function, provided such articles also
make a pleasing impression on the eye. The
Commissioner of Patents, in the same spirit,
ruled not long since that a design patent should
not be refused simply because a device has mov-
ing parts.
The attitude of the Federal courts in recent
years, both as affecting musical instruments and
other articles of commerce that are in somewhat
the same relative position, is that protection may
be invoked via a design patent for a new and
original shape given to an article of manufacture
quite as readily as for an ornamentation placed
on the article and that the "appearance" of an
article is none the less patentable because a
mechanical function is involved.
Where Design Patents Do Not Apply
Some disappointment has been occasioned
now and then to music industry interests by the
fact the the protection of design patents
cannot be invoked for what is known as the
"internal structure" of an article, as, for illus-
tration, a hidden part of a piano or player. In-
asmuch; though, as the whole basis of a design
patent is the "appearance" of the article—the
effect on the mind through the eye—it is but
logical that no feature of interior construction
should be accorded the shelter of a design pat-
ent. There have even been instances in which
design patents have been denied for articles "for
obscure use," evidently on the premise that it
is too much to expect that an article that is cov-
ered up or used in an obscure manner should
possess any high degree of artistic excellence.
However, all such cases are considered indi-
vidually and just as in other directions a bor-
der line case is often disposed of in a manner
that spreads the blanket of a design patent
over features that, at casual glance, might not
seem susceptible of such entrenchment.
In view of the fact that in the music trades
the differences between patented designs are
apt to be matters of detail it is highly impor-
tant that in the most recent pronouncement on
the subject of designs by a Federal court of ap-
peals the principle was laid down that when
it comes to ascertaining what is objectionable
"identity of appearance" it is to be borne in
mind that the persons liable to be deceived are
not experts, but ordinary observers giving such
attention to the matter as purchasers usually
give. "If the effect produced upon the eye is
the same," the court puts it, infringement is
established. Broadly speaking, the tendency
seems to be to afford more rather than less pro-
tection than formerly under a design patent.