Gorham Co. v. White
81 U.S. 511, 20 L. Ed. 731 (1871)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Infringement of a design patent occurs if, in the eye of an ordinary observer giving such attention as a purchaser usually gives, the two designs are substantially the same, and the resemblance is such as to deceive the observer into purchasing one, supposing it to be the other.
Facts:
- Gorham Manufacturing Company held a patent for a new and original design for the handles of flatware, known as the 'cottage' design.
- A man named White subsequently obtained patents in 1867 and 1868 for two similar designs for flatware handles.
- The defendant sold spoons and forks featuring White's patented designs.
- While there were minor differences in the ornamentation between the Gorham and White designs (such as the turn of a scroll or the continuity of a beaded edge), the overall configuration and visual appearance were very similar.
- The resemblance between the designs was significant enough that an ordinary purchaser of silverware would likely mistake the defendant's products for those of Gorham.
Procedural Posture:
- Gorham Manufacturing Co. (the complainants) sued the defendant in a U.S. Circuit Court (the trial court) for design patent infringement.
- The Circuit Court ruled in favor of the defendant, applying a test that required 'substantial identity' in the view of an expert in the trade.
- Gorham Manufacturing Co., the complainants, appealed the Circuit Court's decision to the U.S. Supreme Court.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a design patent infringement occur when an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the infringing product believing it to be the patented one, even if an expert could distinguish between the two designs?
Opinions:
Majority - Justice Strong
Yes. Infringement of a design patent is determined not by an expert's eye but by that of an ordinary observer. The purpose of design patent law is to encourage the decorative arts by protecting the novel appearance that enhances a product's salable value. This value is realized through the product's appeal to the general public, not to experts. If the overall effect upon the eye of an ordinary purchaser is so similar that they would be deceived into buying an infringing product, the patent is infringed. To require that designs be so identical that an expert cannot distinguish them would destroy the protection of the patent act, as human ingenuity can always produce minor variations.
Dissenting - Justices Miller, Field, and Bradley
The opinion notes that these justices dissented but does not include a written dissenting opinion.
Analysis:
This case is foundational in design patent law as it established the 'ordinary observer' test for infringement, a standard that remains central to this day. By rejecting a test based on the eye of an expert, the Court made design patent protection more practical and robust. This decision prevents infringers from escaping liability by making minor, technical modifications that an average consumer would not notice. It aligns the legal standard for infringement with the commercial reality of the marketplace, where the overall aesthetic impression drives consumer choice.
Unlock the full brief for Gorham Co. v. White