## Facts

- Congress authorized design patents under the Patent Act of 1842 (as later amended), covering “new and original” designs that give a distinctive appearance to articles of manufacture.
- In July 1861, Gorham & Co. obtained a design patent for a new design for the handles of table spoons and forks, later marketed as the “cottage pattern,” which became highly popular in the marketplace.
- Gorham & Co. assigned the design patent to Gorham Manufacturing Company.
- In 1867, White obtained a design patent for a spoon-and-fork-handle design he claimed to be original; in 1868, he obtained a second design patent for another handle design.
- White manufactured and sold substantial quantities of spoons and forks using his patented handle designs.
- Gorham Manufacturing Company filed a bill in equity in the Circuit Court for the Southern District of New York seeking to enjoin White’s manufacture and sales under his patents and to obtain appropriate monetary relief, alleging infringement of Gorham’s earlier design patent.
- The circuit court ruled against Gorham on infringement (treating differences identified in close comparisons as sufficient to avoid liability), and Gorham sought Supreme Court review by writ of error.

## Issues

1. What standard governs design-patent infringement: comparison based on fine distinctions noted by trained viewers, or comparison based on the overall visual effect on an ordinary purchaser?
2. Under the proper standard, were White’s spoon and fork handle designs sufficiently similar in appearance to Gorham’s patented “cottage pattern” to amount to infringement?

## Decision

- The Supreme Court reversed the circuit court’s decree and remanded for further proceedings consistent with its infringement standard.
- The Court held that design-patent infringement does not depend on whether trained viewers can spot differences when the designs are examined in detail.
- The proper inquiry is whether, to an ordinary observer giving the attention a purchaser usually gives, the two designs are substantially the same in appearance—so similar that the observer would likely be deceived and buy one supposing it to be the other.
- Applying that test, the Court concluded that White’s accused designs infringed Gorham’s earlier design patent.

## Legal Principles

- Design-patent statutes focus “not so much utility as appearance”; the patent covers what gives an article its distinctive visual character.
- Because the protected subject matter is the look of the article, “identity of appearance” or “sameness of effect upon the eye” is the main measure of substantial identity of design.
- Infringement does not require that the designs appear the same to a trained or technical viewer.
- The controlling test is the “ordinary observer” test: if an ordinary observer, giving the attention a purchaser usually gives, would view the designs as substantially the same and be deceived into purchasing one in the belief it is the other, the later design infringes the earlier design patent.
- Small variations in details will not avoid infringement if the overall visual impression on ordinary purchasers remains effectively the same.

## Conclusion

Gorham Mfg. Co. v. White held that design patents protect the visual appearance of an article, and that infringement is shown when an ordinary purchaser, exercising the attention typically given at purchase, would find the accused and patented designs substantially the same and likely be deceived into buying one for the other; on that basis, the Court reversed the decree for White and sent the case back for appropriate relief.


Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 20 L. Ed. 731 (1871)