author: H. FRANKLIN WATERS, Chief Judge.

text:
    Arnold P. MOORE, an individual d/b/a Moore’s Antiques & Crafts, Plaintiff, v. Charles STEWART, an individual d/b/a Whistle Factory, Defendant.
    Civ. No. 82-3056.
    United States District Court, W.D. Arkansas, Harrison Division.
    Jan. 7, 1985.

      J. Michael Shaw, Shaw, Ledbetter, Hornberger, Cogbill & Arnold, Fort Smith, Ark., and Allan J. Sternstein and William H. Frankel, Neuman, Williams, Anderson & Olson, Chicago, Ill., for plaintiff.
    Frank C. Elcan, II, Harrison, Ark., and Robert R. Keegan, Fayetteville, Ark., for defendant.
   MEMORANDUM OPINION

H. FRANKLIN WATERS, Chief Judge.

Plaintiff, Arnold P. Moore, brought this action against defendant, Charles Stewart, pursuant to 28 U.S.C. § 1338(a) and (b) and 15 U.S.C. § 1121. Plaintiff claims damages for patent infringement, trademark infringement, unfair competition, and false designation of goods in commerce. Defendant denied the allegations of the complaint and counterclaimed for a declaratory judgment that the design patent in question was invalid and not infringed upon.

By an order of this court entered on December 6, 1983, the issue of liability on the patent infringement and unfair competition claims was tried separate and apart from the issue of damages. Trial on the liability issue was tried to the court on August 8 and 9, 1984.

I. Background

From the pleadings, stipulations of the parties, and the credible testimony presented at trial, it appears that plaintiff, a former coal miner, is now a full-time whistle builder. Prior to 1979 Mr. Moore whittled as a hobby, making toys and whistles. At the suggestion of friends who admired his work, plaintiff began making toy whistles with the intention of selling them. He testified that he worked for three to four months to design a configuration that he liked and which he thought would sell. During this period he experimented with a number of different kinds of whistles — including single and multi-tone whistles — before he settled on a whistle configuration which he found pleasing.

The toy whistle configuration which Mr. Moore finally decided to market was a four-tone wooden whistle. Because the multiple tones created a , steam train whistle effect, the whistles were marketed as train whistles with a picture of a steam locomotive and train branded on one side. Plaintiff sold his first train whistle some time in March of 1979. Since that time he has sold many thousands of whistles.

The record reflects that plaintiff spent considerable time, effort, and money developing and promoting his new business. He and his family sold many whistles by traveling throughout the country, stopping at crafts shops, souvenir shops, crafts fairs, gift shops, antique shops, etc. They also developed a lucrative mail-order business. The Moores shipped train whistles to wholesale buyers throughout the United States and in Germany and Switzerland. As part of his promotion, Mr. Moore commissioned the drawing of a logo showing a cartoon character blowing one of Mr. Moore’s whistles. This logo was reproduced on business cards, posters, buttons, shipping cartons, and mailers. Plaintiff estimated that he had distributed several thousand business cards and posters since he began selling his whistles.

Mr. Moore met defendant Stewart some time around the middle of 1979. While on a sales trip, plaintiff stopped in to visit a woodcarving shop run by defendant Charles Stewart in Alpena, Arkansas. Because Mr. Stewart sold woodcarvings and other wooden items in his shop, Mr. Moore approached him about selling train whistles. Although defendant initially declined to buy any of the whistles, the men eventually agreed to trade woodcarvings for whistles. Mr. Stewart soon sold the whistles Mr. Moore left and ordered more whistles. The parties have stipulated that defendant bought and resold over 700 Moore whistles from April, 1979, to April, 1980.

On October 30, 1979, plaintiff filed an application for a patent; U.S. Design Patent No. 263,383 (hereafter referred to as 383) was issued to Mr. Moore on March 16, 1982. During this period defendant quit ordering whistles from plaintiff and began to make his own whistles. There was evidence presented that Mr. Stewart began selling his whistles to his customers rather than the Moore whistles. When Mr. Moore learned that Mr. Stewart was producing and selling what appeared to be an almost exact copy of his whistle, he contacted Mr. Stewart both in person and through his attorneys in an effort to make him cease production of the copies. When these efforts proved to be unsuccessful, this action was brought.

II. Discussion Incorporating Findings of Fact And Conclusions of Law

A. Design Patent Validity

A designer may procure a design patent pursuant to 35 U.S.C. § 171: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” A design patent does not protect the function or utility of an invention, but those elements of a design which give the invention a peculiar or distinctive appearance. Gorham Company v. White, 81 U.S. (14 Wall.) 511, 20 L.Ed. 731 (1872).

The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its saleable value, may enlarge the demand for it, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious producer of those appearances the advantages flowing from them.

Gorham, supra, at 525.

In addition to being ornamental rather than functional, the appearance of the design for which protection is sought must be novel (35 U.S.C. §§ 101, 102) and nonobvious (35 U.S.C. § 103). See also Contico International v. Rubbermaid Commercial Products, 665 F.2d 820, 823 (8th Cir.1982).

Once granted, a patent enjoys a statutory presumption of validity. 35 U.S.C. § 282.

The mandate of section 282 is twofold, requiring “that a party asserting invalidity bear not only the presumption generated burden of going forward with proof but also the burden of persuasion on that issue.” The latter burden remains on the party asserting invalidity whether relevant prior art was or was not considered by the examiner during the prosecution of the patent application before the PTO. The presumption is fully rebutted only when the party asserting invalidity meets the burden of persuasion, i.e., relies on evidence that does in truth render the claimed invention invalid____

E.I. du Pont de Nemours v. Berkley & Co., 620 F.2d 1247, 1266 n. 30 (8th Cir. 1980). Furthermore, the party asserting invalidity must overcome the presumption of validity by substantial evidence. Clark Equipment Co. v. Keller, 570 F.2d 778, 795 (8th Cir.1978), cert. denied, 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978); Woodstream Corp. v. Herter’s Inc., 446 F.2d 1143, 1149 n. 4 (8th Cir.1971).

Defendant challenges the validity of design patent 383 on three grounds: first, that the drawings and written description of the invention failed to contain an adequate number of views to constitute a complete description of the appearance of the whistle; second, that the design was functional rather than ornamental; and third, that the design was obvious in light of the prior art.

6. Incomplete Disclosure

Defendant urges that patent 383 does not present a sufficient number of views to constitute a complete disclosure of the appearance of the whistle. The Rules of Practice in Patent Cases require that “The design must be represented by a drawing made in conformity with the rules laid down for drawings of mechanical inventions and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article ____” 37 C.F.R. § 1.152. Furthermore, in design patents no description other than a reference to the drawing is ordinarily required. 37 C.F.R. § 1.153(a). Patent 383 as issued contains three drawings of the train whistle: FIG. 1 is an isometric view of the whistle showing the mouthpiece and two sides; FIG. 2 is an end view; and FIG. 3 shows a view of one side of the whistle. Defendant argues that the patent is invalid because the drawings do not fully illustrate each of the four sides of the whistle and there is no written statement which indicates that the invention is symmetrical on four sides. These deficiencies; in defendant’s view, lead to the conclusion that patent 383 does not adequately disclose the appearance of the whistle.

In support of this argument, Mr. Stewart points to Defendant’s Exhibit 2, a multitone train whistle made and sold by a Douglas Bruschi. When viewed from one angle, the Bruschi whistle looks very similar to the Moore whistle, but further examination reveals that it is a three-toned whistle which is more or less three-sided. Defendant contends that when viewed from the proper angle, the Bruschi whistle appears to be very similar to the drawings in patent 383, but that the similarity disappears when the Bruschi whistle is rotated in 90° steps.

We do not agree that the drawings in 383 do not disclose the differences between the Moore whistle and other train whistles such as the Bruschi whistle. Although FIG. 3 alone may not fully distinguish the differences between the whistles, FIG. 1 and FIG. 2 clearly present views of the Moore whistle which differ noticeably from the Bruschi whistle.

Neither do we find that 383 fails to completely disclose the appearance of the invention. In Application of Fee, 397 F.2d 329 (C.C.P.A.1968), the Court of Customs and Patent Appeals affirmed the rejection of an application for a design patent for insufficient disclosure. It is significant to note that the two drawings in the rejected application failed completely to render any view of the appearance of a “dominant feature” of the design. Here, all one could say of the drawings in 383 is that they failed to disclose the appearance of two sides of the whistle which were identical to the two sides which were shown.

We also reject the idea that 383 is invalid because it should have in some way disclosed the four-sided symmetry of the Moore whistle. Taking the three views together, we find that one could reasonably have deduced that the whistle’s appearance was the same on each of its four sides.

C. Ornamentality

Mr. Stewart mounts a more serious challenge to the validity of 383 in his contention that the design was not ornamental because it was dictated by functional requirements. It seems that any discussion of ornamentality vs. functionality must begin with the proposition that a design is not functional merely because the article designed may itself have some utilitarian function. The language of 35 U.S.C. § 171 foresees this possibility: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor....” (emphasis added.) Furthermore, designs have been held to be patentable for such functional items as a fireplace grate, Bergstrom v. Sears, Roebuck and Co., 496 F.Supp. 476 (D.Minn.1980); office furniture, J.G. Furniture Co. v. Litton Bus. Systems, Inc., 436 F.Supp. 380 (S.D.N.Y.1977); a contour pillow, Celebrity, Inc. v. A. & B. Instrument Co., Inc., 573 F.2d 11 (10th Cir.1978); and a dolly for refuse containers, Contico Intern. v. Rubbermaid Commercial Products, supra, to name only a few.

Some courts have held that a design is functional rather than ornamental when it is “dictated solely by mechanical or functional requirements.” See, e.g., Hygienic Specialties Co. v. H.G. Salzman, Inc., 302 F.2d 614, 619 (2d Cir.1962). Other courts have phrased the standard somewhat differently, holding that a design is not patentable if its “configuration proceeds primarily from the necessity of functional or mechanical requirements.” Barofsky v. General Electric Corporation, 396 F.2d 340, 342 (9th Cir.1968); and Contico Intern. v. Rubbermaid Commercial Products, 506 F.Supp. 1072, 1075 (E.D.Mo.1981), aff'd, 665 F.2d 820 (8th Cir.1981).

In support of his contention, defendant argues that the shape of the mouthpiece, the length of the whistle, the placement and shape of the air inlets and outlets, the shape of the reeds, the overall shape and dimensions of the whistle and the choice of the construction materials were all dictated by functional and/or economic considerations. We are not convineed by this argument or by the evidence produced at trial in support of it, whether the standard is that the design was dictated solely or primarily by functional considerations. This conclusion is based in part upon our finding that the appearance of the Moore whistle does have a sufficient degree of aesthetic appeal. The simple lines, the configuration, the wood grain, and the hand-crafted appearance combine to create a pleasing impression upon the aesthetic senses of the ordinary observer. (See Appendix for illustrations of both the Moore and the Stewart whistles.)

We also find it significant that there are numerous other ways to produce a multitone train whistle effect without designing a whistle that looks like Mr. Moore’s design. As we have already noted, plaintiff introduced into evidence an example of a prototype design; plaintiff testified that he experimented with several different designs before finding one that he liked. Additionally, Mr. Moore also holds U.S. Design Patent 263,382. This patent protects a toy train whistle design which is very different in appearance from patent 383. Mr. Stewart also produced evidence of a number of multi-tone whistles and horns, but each whistle was, again, significantly different in appearance from the Moore whistle. The evidence establishes that although there are certain functional requirements which must be met before a whistle effect can be produced, there are many possible design solutions which will still create the desired results. Therefore, the court finds that plaintiff’s design accommodates the functional necessities, but is not dictated solely or primarily by them and the design protected by patent 383 is ornamental.

D. Nonobviousness

Mr. Stewart also challenges the validity of patent 383 on the ground that the design was obvious within the meaning of 35 U.S.C. § 103. In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Supreme Court outlined the factual inquiry to be made under the statute:

Under § 103, the scope and content of the prior art are to be determined; the differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Graham, supra, at 17, 86 S.Ct. at 693-94. Although the determination of obviousness or nonobviousness is made against this background of fact, the issue of obviousness is a question of law. Peterson Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1548 (Fed.Cir.1984).

Based upon the record, the court finds that the prior art includes certain patents for multi-tone horns as well as a number of toy whistles, some manufactured commercially and others described in various handicraft publications. Specifically, the prior art consists of the following:

(1) The whole class of handcrafted whistles including slip-bark and bamboo or cane whistles. Such whistles are described in Whittlin’, Whistles, and Thingamajigs by Harlan G. Metcalf. Published in 1974, this book of nature crafts describes the construction of slip-bark whistles and suggests lashing two or three individual whistles together with strips of bark or twine to create a multitone effect.
(2) A two-tone wooden whistle described in the Second Giant Home Workshop Manual prepared by Popular Science Monthly. This whistle is made from a wooden block measuring 7/8" by 11/2" by 31/2".
(3) The Americana whistle advertised at p. 178 of the 1977 B. Shackman & Co. Catalogue. The Americana is a single tone wooden whistle measuring 4" by 3/4" by 3/4"
(4) U.S. Patent No. 43,222, a specification for design issued to G.V.P. Lansing in 1912 for an automobile exhaust horn.
(5) U.S. Patent No. 1,648,245 issued to E.A. Rudolph in 1926 for a musical toy. This patent was cited in patent 383.
(6) U.S. Patent No. 42,832, a specification for design issued to A. Cameron in 1912 for a multi-tone chime whistle. This patent was cited in patent 383.
(7) United Kingdom Patent No. 112,-363, issued to R. Field in 1918 for an improved musical wind instrument. This patent was cited in patent 383.

In regard to ascertaining the differences between patent 383 and the prior art, we have grappled with the problem of comparing the Moore whistle to each example of the prior art. Because the prior art consists of single and multi-tone whistles and horns, there are certain functional similarities between' 383 and the prior art. Specifically, whether one considers a slip-bark or bamboo whistle, the Americana whistle, the two-tone Popular Science whistle, or the Moore whistle, there must be air inlets and outlets, air chambers, and reeds if a whistle sound is to be produced. Likewise, many of these whistles share a certain handcrafted appeal. To this extent patent 383 and the prior art are similar. In spite of these similarities, we find that the appearance of the Moore design is sufficiently different to distinguish it from the other handcrafted whistles.

The major feature which sets the design of patent 383 apart from the class of handcrafted whistles is its unique configuration. This configuration creates a distinctive appearance while producing a four-tone train whistle sound. We also find, based upon the record before us, that this configuration was the creation of Mr. Moore. The one and two-tone whistles do not necessarily suggest that the only possible configuration for a multi-tone whistle would be that chosen by plaintiff.

In an effort to demonstrate the alleged obviousness, defendant’s expert, presumably at defendant’s request, built four Americana whistles, each of a different pitch, and banded them together to create a multi-tone whistle which somewhat resembled the design of patent 383. Having noted the similarity, we still cannot say that defendant has established that such a combination of single-tone whistles was obvious prior to the creation of the Moore design.

As for the Rudolph, Cameron and Field patents, we have examined these patents and find we must agree with the opinion of defendant’s expert that these whistles are visually quite dissimilar from patent 383 (Tr. 205). This then leaves only the Lansing automobile exhaust horn. There are some visual similarities in the shape and general proportions of the two patents; however, the Lansing horn was, according to defendant’s witness, probably made out of sheet metal and would be difficult to duplicate in wood. (Tr. 204-205). We find that the appearance of the Lansing horn is significantly different from that of the Moore train whistle.

In design patent cases the fictitious person identified in section 103 as “one of ordinary skill in the art” is considered to be “the designer of ordinary capability who designs articles of the type presented in the application; this approach has been found to be consistent with the requirement of Graham that the level of ordinary skill in the pertinent art be determined.” In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A.1981). Although defendant’s expert offered his opinion that the design of the Moore whistle would be “fairly obvious” to a designer skilled in the art of woodworking (Tr. 206), there is almost no evidence in the record of the level of skill of the ordinary designer of toy whistles. “In retrospect, many creative developments seem commonplace. The critical question under Graham is whether at the time of the invention the subject would have been obvious to one skilled in the art.” Wood-stream Corporation v. Herter’s, Inc., supra, at 1156. Defendant’s entire case against plaintiff on the issue of obviousness consists of the testimony of a single witness who concluded that patent 383 was obvious in light of the prior art. We find this evidence to be unpersuasive and insufficient to overcome the statutory presumption of validity.

We also cannot ignore in our analysis of defendant’s attack on the validity of patent 383 the fact that Mr. Stewart filed an application for a design patent on his whistle on October 24, 1983, while this action was still pending. It may be inconsistent for defendant to attack the validity of the Moore patent on the grounds of lack of ornamentality and obviousness while simultaneously seeking a patent for virtually the same design, but such inconsistency affords no basis for estoppel of defendant’s claims. Paramount Corp. v. Tri-Ergon Corp., 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997 (1935). However, this inconsistency is relevant in evaluating Mr. Stewart’s vigorous attack on the validity of patent 383. Bergstrom v. Sears, Roebuck and Co., supra, at 487 n. 6.

Having carefully considered defendant’s claims regarding the validity of patent 383 and the record developed at trial, we cannot say that defendant has successfully carried his burden of proving invalidity. See Environmental Designs v. Union Oil Co. of Cal., 713 F.2d 693, 699 n. 9 (Fed.Cir.1983); Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1567 (Fed.Cir.1983).

III. Infringement

The Supreme Court established the test for infringement of design patents in Gorham Co. v. White, supra, 81 U.S. (14 Wall.) at 525:

We are now prepared to inquire what is the true test of identity of design. Plainly, it must be sameness of appearance, and mere difference of lines in the drawing or sketch, a greater or smaller number of lines or slight variances in configuration, if sufficient to change the effect upon the eye, will not destroy the substantial identity. An engraving which has many lines may present to the eye the same picture, and to the mind the same idea or conception of another with much fewer lines. The design, however, would be the same. So a pattern for a carpet, or a print may be made up of wreaths of flowers arranged in a particular manner. Another carpet may have similar wreaths, arranged in a like manner, so that none but very acute observers could detect a difference. Yet in the wreaths upon one there may be fewer flowers, and the wreaths may be placed at wider distances from each other. Surely in such a case the designs are alike. The same conception was in the mind of the designer, and to that conception he gave expression.
....
The purpose of the law must be effected if possible; but, plainly, it cannot be if, while the general appearance of the design is preserved, minor differences of detail in the manner in which the appearance is produced, observable by experts, but not noticed by ordinary observers, by those who buy and use, are sufficient to relieve an imitating design from condemnation as an infringement.
We hold, therefore, that 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.

In this case Mr. Stewart manufactured and sold two whistle models. The first model was made prior to November, 1982, and is an almost exact copy of the Moore whistle. In his post-trial brief defendant conceded that this early version did infringe patent 383 if 383 were held to be valid. Because of our finding that defendant failed to overcome the statutory presumption of validity, we also find that the Stewart whistle made and sold prior to November, 1982, did infringe upon Mr. Moore’s rights under patent 383.

The Stewart whistle made and sold since November, 1982, exhibits some minor design changes from the earlier model. Defendant has attempted to characterize this model as “wedge-shaped,” but that characterization is not entirely accurate. Although a portion of one end of the whistle has been cut away, the whistle still retains the basic dimensions and configuration of the Moore whistle. The only other potentially significant change is in the position of the notched air outlets. In the Moore whistle the outlets are located just beneath the mouthpiece on each corner of the whistle. The effect of this placement of the outlets is that there is a notch at each corner for each outlet. The later Stewart model provides the necessary outlets with two notches, one on each side of the whistle beneath the mouthpiece. Each notch forms the outlets for two chambers. However, this difference in the air outlet positioning is not readily apparent, and usually is discovered only upon closer inspection. Other than these two variations, the Moore and the Stewart whistles are essentially the same.

The test for infringement requires only that there be substantial identity of appearance between the patented design and the accused design from the perspective of the ordinary observer. Graver Mfg. Co. v. Linde Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Bergstrom v. Sears, Roebuck and Co., supra, at 491. In the court’s view the appearances of the Moore and the Stewart whistles are substantially identical despite the previously noted variations. The Stewart whistle even as modified retains the general shape, configuration, and dimensions of the Moore design; any differences in appearance, though discernible upon close examination, are not likely to be quickly perceived by an ordinary observer paying the degree of attention a purchaser would. The court also finds that the Stewart whistle appropriates the novelty in patent 383 which distinguishes it from the prior art. Sears, Roebuck and Co. v. Talge, 140 F.2d 395, 396 (8th Cir.1944). Specifically, the Stewart whistle appropriated the unique configuration which set the Moore whistle apart from the prior art.

IV. Unfair Competition

In addition to his patent infringement claim, plaintiff also alleged that defendant engaged in unfair competition under section 43(a) of the Lanham Act.

To prove a violation of section 43(a), a plaintiff must establish the existence of three elements:

(1) that the trade dress or product configuration of the two competing products is confusingly similar;
(2) that the appropriated features of the trade dress or product configuration are primarily nonfunctional; and
(3) that the trade dress or product configuration has obtained secondary meaning.

Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed.Cir.1984); see also TESCO v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.1976).

In this circuit the elements necessary to establish secondary meaning include:

[A] name, mark, or symbol by long and exclusive use and advertising by one person in the sale of his goods ... may become so associated in the public mind with such goods ... that it serves to identify them and distinguish them from other goods ... of others. When such an association exists, the name, mark, or symbol is said to have acquired a “secondary meaning,” in which the original user has a property right which equity will protect against unfair appropriation by a competitor.

TESCO, supra, at 1219, citing, Shoppers Fair of Arkansas, Inc. v. Sanders Co., 328 F.2d 496, 499 (8th Cir.1964).

Plaintiff could also establish a section 43(a) claim by showing such substantial, exclusive and continuous use of the design over a sufficient period of time that the public has come to expect every wooden train whistle shaped like the Moore whistle to be made by plaintiff. If such recognition could be shown, the whistle itself could be said to have acquired secondary meaning or distinctiveness. Peterson Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1549 (Fed.Cir.1984). In the alternative, plaintiff could even establish that his whistle had acquired such public recognition in spite of minimal sales and advertising, if there was proof that consumers did in fact associate the design of this type of whistle with plaintiff. TESCO, supra, at 1220.

Mr. Moore did testify that his whistle was recognized as the Arnold Moore whistle and that people associated any whistle of this type with him. However, we cannot consider his testimony as being conclusive on the issue. The only other proof offered which could have established that either the Moore whistle itself or some marking on it had acquired secondary meaning or distinctiveness was the testimony of a Mr. Ronald Conn, a retailer of wooden craft objects. Mr. Conn’s stores had originally purchased plaintiff’s whistles from the defendant. When Mr. Stewart began to manufacture his own whistle, he shipped his copy to Mr. Conn’s stores rather than the Moore whistle. Mr. Conn testified that the whistles had been popular, but quality problems later arose after the substitution was made. We think it important to note that Mr. Conn spoke of train whistles generically; he even indicated that customers merely asked for train whistles, not Moore whistles. Mr. Conn never testified at any point that he identified the train whistles he received with any source other than Mr. Stewart. There was no indication that he or any of his customers associated the train whistles with plaintiff. Mr. Conn himself had not seen any train whistles before defendant called on him with a sample whistle; he did not know of plaintiff or his connection with the design of the whistles until Mr. Moore appeared in his store in the spring of 1981. We do not believe that Mr. Conn’s testimony demonstrates that the Moore whistle had acquired any secondary meaning or distinctiveness.

We find that the Moore whistle has not acquired secondary meaning or distinctiveness and, therefore, plaintiff is precluded from any recovery under section 43(a) of the Lanham Act.

In summary, we conclude that the defendant has failed to prove any invalidity of U.S. Patent Design 263,383; that defendant Charles Stewart has infringed U.S. Patent Design 263,383 by the manufacture and sale of his whistle; that plaintiff is entitled to injunctive relief under 35 U.S.C. § 283; that defendant has infringed U.S. Patent Design 263,383 under 35 U.S.C. § 271 and is liable to plaintiff for such infringement; and that plaintiff should not recover from defendant for any violation under section 43(a) of the Lanham Act. The issue of damages will be tried at a later date. __

A separate judgment in accordance with this memorandum opinion will be concurrently entered.

APPENDIX

      . Plaintiff introduced an example of one of his prototype designs. Although this hand-whittled whistle sounds very similar to the later production model whistles, it is quite different in appearance.

      . At the trial plaintiff projected that he would sell as many as 80,000 whistles in 1984 alone.

      . Such a statement was included in Design Patent 199,143 in Hadco Products, Inc. v. Walter Kidde & Co., 462 F.2d 1265, 174 USPQ 358 (3rd Cir.1972).

      . For example, FIG. 1 clearly indicates that thé Moore whistle mouthpiece is four-sided with openings for four air chambers. When viewed from the same perspective the Bruschi mouthpiece is just as clearly three-sided with openings for only three air chambers.

      . See, e.g., Ex parte Salsbury, 38 USPQ 149 and 48 USPQ 339, where the Patent Office Board of Appeals held that a single figure of a drawing in a perspective view constituted a complete disclosure of the appearance of the article. Although the drawing did not show all surfaces of the article (because all surfaces were not visible from a single viewpoint), "... articles of a symmetrical nature are often sufficiently illustrated by a single well-executed perspective view, since it can be deduced with certainty from that one view how the article would appear from the other side.” 38 USPQ at 151.

      . Defendant claimed plaintiff's whistle design was functional in part because Mr. Moore admitted at trial that he had found no other four-tone whistle that was less expensive to manufacture (Tr. 76). We find no authority, nor has defendant pointed to any, for the proposition that a design is not ornamental unless it was conceived without any consideration as to the cost of production.

      . 35 U.S.C. § 103 provides:
      A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of the title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

      . The examples of prior art listed above are only the examples introduced by defendant at trial. The record also reflects that certain other patents were located in a patentability search initiated by plaintiff. Those publications include: U.S. Patent No. 396,821 for a bicycle whistle; U.S. Patent No. 649,576 for a whistle; U.S. Patent No. 1,383,878 for a toy whistle; U.S. Patent No. 1,515,471 for a locomotive whistle; U.S. Patent No. 1,705,627 for a controlling mechanism for locomotive whistles; U.S. Patent No. 1,786,122; U.S. Patent No. 3,721,521 for an apparatus for converting pressure energy to thermal energy; and U.S. Patent No. 4,020,693 for an accoustic transducer for nuclear reactor monitoring. All of these patents differ from patent 383 in shape, appearance and aesthetic appeal.

      . The court does take judicial notice of the fact that the technology of making a whistle of this sort is so relatively simple that it is often mastered by small boys with pocket knives.


source: Caselaw Access Project

author: BRIEANT, District Judge.

license: Public Domain

text:
    UNITED STATES of America, ex rel., VUITTON ET FILS S.A., and Louis Vuitton S.A., Plaintiffs, v. KAREN BAGS, INC., Jade Handbag Co., Inc., Sol N. Klayminc and Jak Handbag Inc., Defendants and Alleged Criminal Contemnors, and Barry Dean Klayminc, Gerald J. Young, George Cariste, S.M.E., S.A., Crystal, S.A., David Rochman, Robert G. Pariseault, Esq. and Nathan Helfand, Additional Alleged Criminal Contemnors.
    No. 83 Cr. Misc. 1, p. 22-CLB.
    United States District Court, S.D. New York.
    Jan. 8, 1985.
    J. Joseph Bainton, Reboul, MacMurray, Hewitt, Maynard & Kristol, New York City, Specially Appointed Prosecutor for the U.S.
    James A. Cohen, Washington Square Legal Services, New York City, for defendant Barry Dean Klayminc.
   MEMORANDUM AND ORDER

Subpoena Request

BRIEANT, District Judge.

The criminal contemnors Sol N. Klayminc, Barry Dean Klayminc, Gerald J. Young, George Cariste, David Rochman and Nathan Helfand were tried jointly before the Court and a jury for criminal contempt in violation of 18 U.S.C. § 401(3), in that Sol N. Klayminc, aided and abetted by the other eontemnors, knowingly and wilfully violated a prior injunction issued by this Court forbidding the manufacture, distribution, sale or offer for sale of counterfeit Louis Vuitton trademarked merchandise. Following a verdict of guilty, defendants were granted an enlarged period of time for post verdict motions to dismiss the charge or grant a new trial and for other relief. The motions remain pending and undecided.

By an application to this Court for an ex parte order, dated November 21, 1984, contemnor Barry Klayminc, who has previously been found to be indigent, seeks leave to issue a subpoena duces tecum at Government expense pursuant to Rule 17(b), F.R. Crim.P. The stated purpose of defendant’s application is to finance issuance of a subpoena to CBS News, Inc. to produce the “outtakes” from a “Sixty Minutes” program entitled “Sting Man Stings Again” which CBS aired on October 21, 1984.

The criminal trial of Barry Klayminc. and others was held in May, 1984. It stemmed from the efforts of Louis Vuitton, S.A. to protect its trademark and profits from counterfeiters who had achieved remarkable success at selling fake Vuitton high fashion luggage products. See United States v. Karen Bags, Inc., 592 F.Supp. 734 (S.D.N.Y.1984). According to Barry Klayminc’s counsel, “a subpoena duces tecum for the ‘outtakes’ is necessary to provide Barry with an adequate defense since a portion of the broadcast suggests additional facts not previously before this court concerning violations of due process [by counsel for Louis Vuitton, S.A. who represented the Government in prosecuting the contempt].” (Affidavit of James A. Cohen, If 5, sworn to November 20, 1984). The information is sought to support the various pending post-trial motions submitted by Barry Klayminc, especially the “Notice of Motion to Set Aside the Verdict and Dismiss the Order to Show Cause and/or for a Hearing on Due Process Violations,” filed November 15, 1984. While the Court has not yet made any ruling as of this date with regard to the contemnor’s post-trial motions, it seems clear that the within request for an ex parte order authorizing service of a subpoena upon CBS News should be, and it is, denied.

Upon reviewing the typed transcript of the 60 Minutes segment as broadcast, along with the transcript of the contemnor’s trial, the Court finds that there is no showing of necessity that would justify his request for this discovery. Defendant had a full opportunity at trial to cross-examine Melvin Weinberg, the witness whose testimony is at issue. Presumably Barry Klayminc was privy to the content of whatever conversations he had with Mel Weinberg and could relate these subjects to his attorney before the trial began. Nevertheless, contemnor claims that because Mr. Weinberg will not consent to be interviewed post-trial by Mr. Cohen, and because the television segment revealed new facts, the subpoena should issue.

The “Sting” referred to consisted of an elaborate charade by which Mr. Weinberg, of Abscam fame, pretended to be a representative of organized crime and/or operators of gambling casinos, who wished to establish a substantial manufacturing organization to knock off Vuitton goods. He sought the aid of the eontemnors in this , effort. The foreseeable defense of entrapment or improper inducement was urged by the eontemnors but rejected by the trial jury. While Weinberg was fully cross-examined at trial, his credibility was supported as to most relevant events by videotapes of his meetings with the eontemnors who told the camera all that Vuitton or Weinberg wanted to know.

Contrary to defendant’s view, the Court does not believe that new facts have surfaced since the time of trial such that a reexamination of Mr. Weinberg is necessary to develop an adequate defense. Mr. Weinberg’s statements during the broadcast portion of the 60 Minutes program do not differ significantly from the testimony he gave at trial. (See Government’s Trial Exhibit No. 69, and Trial Tr. at pp. 343-45). Because outrageous views and expressions are generally the best news, it is hard to believe that the “outtakes,” or unaired portions of the television interview of Weinberg by Mike Wallace are likely to contain any statements more inflammatory, sensational, outrageous or interesting to the defense, than what CBS chose to broadcast. To suggest otherwise, or to assert that more helpful material exists in the “outtakes” is to rely on pure conjecture.

This Court believes, more importantly, that such a request to compel disclosure of media files for this sort of fishing expedition should not lightly be granted. CBS is not a party to this action. It has no interest in the outcome. Court-ordered production of CBS’ news documents under the circumstances of this case implicates serious First Amendment constitutional problems unrelated to the due process rights of Barry Klayminc.

We begin our discussion by observing that it is no longer in serious dispute that television journalists are a part of the free press, with editorial functions to perform. Columbia Broadcasting System, Inc. v. Democratic National Committee, 412 U.S. 94, 124-25, 93 S.Ct. 2080, 36 L.Ed.2d 772 (1973). In its role in gathering and disseminating information, the press often is caught between the competing concerns of privacy, privilege, and the public’s need to know. As a consequence, reported cases frequently have considered the First Amendment protections afforded to the press in its peculiar position as a conduit for the free flow of public information and its importance in fulfilling the societal goals which rest upon the free exchange of information and ideas. See, e.g., Richmond Newspapers, Inc. v. Virginia, 448 U.S. 555, 100 S.Ct. 2814, 65 L.Ed.2d 973 (1980) (upholding right of press to attend criminal trials); Houchins v. KQED, Inc., 438 U.S. 1, 98 S.Ct. 2588, 57 L.Ed.2d 553 (1978) (Stewart, J., concurring) (discussing constitutional role of the press as basis for requiring “effective” access to government information); Nebraska Press Association v. Stuart, 427 U.S. 539, 96 S.Ct. 2791, 49 L.Ed.2d 683 (1976) (invalidating pre-trial court order prohibiting press reporting of news prejudicial to a criminal defendant); Miami Herald Publishing Co. v. Tornillo, 418 U.S. 241, 94 S.Ct. 2831, 41 L.Ed.2d 730 (1974) (invalidating state “right of reply” statute because its intrusion into the editorial function transgresses First Amendment standards); Branzburg v. Hayes, 408 U.S. 665, 92 S.Ct. 2646, 33 L.Ed.2d 626 (1972) (Powell, J., concurring) (recognizing qualified privilege of journalist under balancing test because newsgathering is essential to a free press); In re Grand Jury Subpoena Dated January 4, 1984, 583 F.Supp. 991, 992 (E.D.N.Y.1984) (citing lower court cases which have upheld journalists’ qualified privilege not to reveal unpublished documents or confidential sources).

In this Circuit, the reporter’s qualified privilege is recognized as extending to both civil and criminal cases. United States v. Burke, 700 F.2d 70, 77 (2d Cir.), cert. denied, — U.S..-, 104 S.Ct. 72, 78 L.Ed.2d 85 (1983). When a journalist claims First Amendment protection from compelled disclosure of his confidential unpublished material, the district court is required to evaluate and balance the legitimate competing interests of the journalist’s First Amendment rights, including his editorial freedom to select what gathered information will be published and what will not, and the defendant’s Sixth Amendment right to a fair trial. Burke, supra 700 F.2d at 77, quoting United States v. Orsini, 424 F.Supp. 229, 232 (E.D.N.Y.1976), aff'd mem., 559 F.2d 1206 (2d Cir.), cert. denied, 434 U.S. 997, 98 S.Ct. 636, 54 L.Ed.2d 491 (1977). In addition to affirming this balancing test, the Court of Appeals has followed a standard of review which places a demanding burden upon the litigant who “seeks to subpoena documents that have been prepared by a reporter in connection with a news story ....” Burke, 700 F.2d at 76.

The test followed by the Court of Appeals, announced in In re Petroleum Products Antitrust Litigation, 680 F.2d 5, 7-8 (2d Cir.) (per curiam), cert. denied, 459 U.S. 909, 103 S.Ct. 215, 74 L.Ed.2d 171 (1982), is that:

“to protect the important interests of reporters and the public in preserving the confidentiality of the journalists’ sources, disclosure may be ordered only upon a clear and specific showing that the information is: highly material and relevant, necessary or critical to the maintenance of the claim, and not obtainable from other available sources.” (Citations omitted).

Unless the moving party can demonstrate in a specific manner that the subpoenaed documents are “highly material,” and not merely cumulative, the reporter’s privilege will be upheld. And, as a matter of principle, and to avoid the attrition which would flow from a failure to assert the privilege, it is customary for journalists to assert their First Amendment rights whenever applicable, and sometimes even where not applicable, lest such a valuable foundation of liberty might wither.

The Supreme Court discussed the issue of a possible evidentiary need which might justify discovery into the editorial process of a news defendant in Herbert v. Lando, 441 U.S. 153, 99 S.Ct. 1635, 60 L.Ed.2d 115 (1979). There the Court held that a defendant member of the press could not assert successfully an editorial privilege where the libel plaintiff needed to discover evidence in order to prove “actual malice” under the standard of New York Times Co. v. Sullivan, 376 U.S. 254, 84 S.Ct. 710, 11 L.Ed.2d 686 (1964). 441 U.S. at 170-77, 99 S.Ct. at 1645-49. Significantly, the Court also stated that: “Of course, if inquiry into editorial conclusions threatens the suppression not only of information known or strongly suspected to be unreliable but also of truthful information, the issue would be quite different.” Id. at 172, 99 S.Ct. at 1647. Here, Barry Klayminc is not a civil plaintiff seeking to amass evidence against CBS in support of a libel or defamation claim; accordingly, his application for a subpoena raises this “quite different issue” and its concomitant question of whether movant’s inquiry, if permitted, could act as a chill on news coverage of subjects that will trigger a media duty to grant access to news files, or limit the freedom of editorial expression in matters affecting the public interest, such as the widespread counterfeiting of trademarked high fashion goods and the wilful disobedience of court injunctions.

In Herbert v. Lando, the argument that compelled disclosure of editorial conversations would have an intolerable chilling effect was held to be an argument without merit solely because the claimed inhibition flowed from fear of damages liability on the part of the holder of the First Amendment privilege; an effect which Sullivan found to be consistent with the First Amendment. 441 U.S. at 171, 99 S.Ct. at 1646. Here, the chilling effect if this subpoena should issue would be due to fear that every time a television documentary, made after completion of a criminal trial, contained reference to that crime, the criminal defendant would be able to scour the media files in support of a motion for post-conviction relief. It is reasonable to assume that members of the press would be reluctant to take on the obligation of producing sources, notes, files, or “outtakes,” to criminal defendants whose completed trials are reported in the news. Yet if we were to authorize the requested subpoena, this is precisely the burden that would ultimately be placed upon news reporters and upon the process of editorial analysis.

The resulting possibility of a chill on a news broadcaster’s willingness to interview trial witnesses or otherwise report and editorialize on completed court proceedings vital to the public interest, in the analytical fashion demanded by the reporter’s duty to the public, presents an impermissible risk to First Amendment freedoms. This is not a case where the danger of pre-trial publicity might prejudice a criminal defendant’s constitutional rights to a fair trial, since the trial was over when the broadcast was produced and exhibited. See Nebraska Press Association, supra; Sheppard v. Maxwell, 384 U.S. 333, 86 S.Ct. 1507, 16 L.Ed.2d 600 (1966).

There is no practical need for the relief sought. Contemnor Barry Klayminc has had an ample opportunity at his trial to impeach the credibility of Melvin Weinberg by cross-examination or by investigation. He also had the opportunity to raise arguments and to present facts in support of his claim that the conduct of his prosecution violated due process standards. See United States v. Karen Bags, Inc., 592 F.Supp. 734, 742-48 (S.D.N.Y.1984); Hearing Transcript, Oct. 5, 1984; Trial Transcript, May, 1984, pp. 185, 289-328. Any further facts that might possibly be gleaned from the CBS “outtakes” are likely to be merely cumulative, and not probative of the constitutional violations asserted by Barry Klayminc. This motion, then, is at most based on a hypothesis or “hunch,” lacking a logical basis, that because there are “outtakes” which show Weinberg speaking, he must have said something which reflects adversely on his own credibility or demonstrates the innocence of Klayminc. This non sequitur is insufficient as a specific showing of need for “highly material” or “critical” information, required under United States v. Burke, supra. The illogical character of this request becomes apparent if we hypothesize that after verdict in a criminal trial a witness for the prosecution was known to have spent the evening at his favorite dram shop, leaning across the bar, foot on the brass rail, imbibing while telling his life story to the boniface. Would a subpoena issue on the theory that what was told in the tavern must have been inconsistent with the testimony at trial? We note that habitues of saloons and guests at talk shows are usually not placed under oath, and in both cases temptations are great for exaggeration and for the speaker placing himself in the most favorable light. The resulting information in each case is likely to be of little or no evidentiary value in court.

This case is readily distinguishable from Westmoreland v. CBS, Inc., 97 F.R.D. 703 (S.D.N.Y.1983). In Westmoreland the Court found that CBS, a party, had attempted to “blow hot and cold” by holding out the content of its otherwise privileged report to the public in support of its litigation posture, and then at the same time refusing to produce the unpublished report because of a claimed journalistic privilege. To initiate procedures looking to compel CBS as a non-party to respond to a subpoena duces tecum for unpublished outtakes, despite CBS’ important right to First Amendment protection of its editorial process, and upon an inadequate showing of need by contemnor Barry Klayminc, is a first step leading onto a slippery slope, and one which this Court declines to take in this case.

Accordingly, defendant’s application pursuant to Rule 17(b), F.R.Crim.P. for an ex parte order is hereby denied.

So Ordered.

      . Defendant's attorney has informed the Court that CBS refused his informal request for the documents. This application is for an ex parte order, and was made without notice to CBS or the Special Prosecutor. Accordingly, there is no pending motion to quash. No purpose would be served in issuing the subpoena merely for the purpose of inviting such a motion, since it is clear that such a motion would have to be made for institutional reasons, and, as explained in the text, if made, would have to be granted.


author: ALLEN SHARP, Chief Judge.

text:
    Brian K. WILSON, By and Through LINCOLN NATIONAL BANK & TRUST COMPANY OF FORT WAYNE, Guardian of the Estate of Brian K. Wilson, and Ilene Wilson, Plaintiffs, v. ROBERTSHAW CONTROLS COMPANY, A Delaware Corporation, Defendants.
    No. S 83-312.
    United States District Court, N.D. Indiana, South Bend Division.
    Jan. 8, 1985.

      J. James McKenna, Rockville, Md., Daniel A. Roby, Fort Wayne, Ind., for plaintiffs.
    Roland Obenchain, South Bend, Ind., for defendants.
   MEMORANDUM AND ORDER

ALLEN SHARP, Chief Judge.

This cause is before the court on the motion to dismiss Count II of plaintiff’s complaint for failure to state a claim upon which relief can be granted of defendant, Robertshaw Controls Company (Robertshaw). As a basis for this motion, defendant contends that no private right of action is created for an alleged violation of the non-binding interpretive rules of the Consumer Product Safety Commission (CPSC) under 15 U.S.C. § 2072(a). For the reasons set forth below, defendant’s motion to dismiss is denied.

I.

On June 7, 1979, plaintiff, Brian K. Wilson, sustained second and third degree burns over 90% to 95% of his body as a result of an alleged liquid propane gas explosion and fire in his grandmother’s home. Plaintiffs contend that the liquid propane gas escaped from a hot water heater located in the basement of the house as a result of a defect in the control of the hot water heater. Plaintiffs allege that such control was a Unitrol 110 Control containing the date stamp “CX” which was part of a family of controls manufactured by Robertshaw between December 1954 and March 1957 known as Unitrol 110 and 200 Controls.

In addition, plaintiffs state that defendant reported to CPSC, pursuant to § 2064 of the Consumer Product Safety Act, 15 U.S.C. § 2051, et seq. (CPSA), that the controls in question “could” contain a substantial product hazard. Plaintiffs contend that in making such report, defendant failed to provide all necessary information to the CPSC, thereby committing a fraud upon that agency.

Based on these allegations, plaintiffs seek recovery on the following legal theories: (1) (Count I) fraud; (2) (Count II) violation of the provisions of the CPSA; (3) (Count III) breach of express and implied warranty; (4) (Count IV) negligence; (5) (Count V) strict liability in tort; (6) (Count VI) intentional infliction of emotional distress; and (7) (Count VII) loss of familial relationship on the theories set forth in the prior counts.

On April 2, 1984, defendant filed its motion for summary judgment on the statute of limitations question. Plaintiffs response was filed on April 23, 1984. Following a hearing on this motion on April 27, 1984, this court held that plaintiffs’ action was governed by the statute of limitations applicable to product liability actions, Ind. Code § 33-1-1.5-5 (1978), but denied defendant’s motion on the basis of the existence of a question of material fact with respect to the issue of fraudulent concealment. See Memorandum and Order of this Court, June 28, 1984, p. 10. At that time, this court requested the parties to submit briefs under Fed.R.Civ.P. 56 on the issue of a private cause of action under the CPSA and the applicable statute of limitations under the law of Indiana. In response to that request, defendant filed a motion in accordance with Fed.R.Civ.P. 12(b)(6) to dismiss Count II of plaintiff’s complaint on September 4, 1984. Plaintiffs’ response was filed September 21, 1984. A hearing was held on such motion on November 9, 1984 in South Bend, Indiana.

II.

A.

Congress enacted the CPSA in September 1972 in order to create a standardized mechanism for regulating the manufacture and distribution of consumer products. See S.Rep. No. 835, 92nd Cong., 2nd Sess., reprinted in 1972 U.S.Code Cong. & Admin.News 4573, 4574. The basic thrust of the legislation is to “protect the public against unreasonable risks of injury associated with consumer products.” 15 U.S.C. § 2051(b). To further the goals of the Act, Congress created the CPSC which came into existence on May 14, 1973. The CPSC was empowered to promulgate rules to effectuate the purposes of the CPSA. The CPSC has issued rules which may be classified into two major categories: (1) consumer product safety rules, and (2) administrative rules. The former are comprised of rules whose basic function is to halt or restrict the sale or manufacture of consumer products deemed unreasonably dangerous to the public. Butcher v. Robertshaw Controls Co., 550 F.Supp. 692, 695 (D.Md.1981). The second category of rules of facilitates the administration of the CPSC and its statutory duties. Crucial among these is the subset of regulations comprising the disclosures rules. Id.

The disclosure provisions are found generally in 16 C.F.R. § 1115. As set out in § 1151.1, the purpose of the regulations is to interpret the reporting requirements imposed on manufacturers, distributors and retailers by 15 U.S.C. § 2064(b) and to indicate the actions and sanctions which the Commission may require or impose to protect the public.

In this case plaintiffs allege that defendant failed to comply with the reporting provisions of the CPSA and 16 C.F.R. § 1115 et seq. Specifically, plaintiffs contend that defendant notified the CPSC on April 18, 1974 that the Unitrol Models 110 and 200 might have a defect that could create a potential hazard. Plaintiffs argue that such report was inadequate in that defendant was aware of numerous deaths and accidents which occurred prior to April 1974 as a result of an inherent defect in the Unitrol Models 200 and 110 and base their right to recovery on 15 U.S.C. § 2072 (1972).

Defendant argues that the allegations as set forth in plaintiffs’ complaint do not state a private right of action cognizable under federal law because neither section 2064(b) nor 16 C.F.R. § 1115 et seq. rise to the level of a “consumer product safety rule, or any other rule order issued by the Commission.”

The provision of the CPSA upon which plaintiffs premise their right to recovery states as follows:

Any person who shall sustain injury by reason of any knowing (including willful) violation of a consumer product safety rule or any other rule or order issued by the Commission may sue any person who knowingly (including willfully) violated any such rule or order in any district court of the United States in the district in which the defendant resides or is found or has an agent, shall recover damages sustained, and may, if the court determines it to be in the interest of justice, recover the costs of suit, including reasonable attorneys’ fees (determined in accordance with section 2060(f) of this title) and reasonable expert witnesses’ fees: Provided, That the matter in controversy exceeds the sum or value of $10,000, exclusive of interest and costs, unless such action is brought against the United States, any agency thereof, or any officer or employee thereof in his official capacity.
15 U.S.C.A. § 2072(a) (West 1982).

The controversy between the parties of this action revolves around that portion of the provision that reads “violation of a consumer product safety rule, or any other rule or order issued by the Commission.” Defendant strenuously contends that plaintiffs’ claim to a private right of action under the CPSC must fail because the reporting provisions of 16 C.F.R. § 1115 et seq. are interpretive rules which set out an agency’s view of the obligations imposed by a regulatory scheme but are not legally binding and enforceable.

Defendant has raised this argument, though couched in different terms, before other courts who had before them the identical issue of the existence of a private cause of action under 15 U.S.C. § 2072(a). The courts in both Young v. Robertshaw Controls Co., 560 F.Supp. 288 (N.D.N.Y.1983) and Butcher v. Robertshaw Controls Co., supra, rejected defendant’s argument relying primarily on the unambiguous language of section 2072(a) itself. Young, 560 F.Supp. at 292, 294; Butcher, 550 F.Supp. at 698. Judge Miner, in Young, stated:

Defendant’s contention that 16 C.F.R. § 1115, an “interpretive” rule, is not a “rule” within the meaning of the Administrative Procedure Act, 5 U.S.C. § 551, et seq. (Supplemental Memorandum of Law Number One, p. 10), is wholly without merit. Title 5 U.S.C. § 551(4) provides:
“rule” means the whole or a part of an agency statement of general or particular applicability and future effect designed to implement, interpret, or prescribe law or policy or describing the organization, procedure, or practice requirements of an agency____
“The breadth of this definition cannot be gainsaid.” Batterton v. Marshall, 648 F.2d 694, 700 (D.C.Cir.1980). Clearly, an “interpretive rule,” like the disclosure requirement here, is a rule within the meaning of the APA. Moreover, as indicated above, there is no indication in the language of § 2072 that interpretive rules were intended to be excluded from the operation of that section’s provisions. This Court, therefore, is still not persuaded that § 2072 should be construed in the restrictive manner suggested by defendant.
Young, 560 F.Supp. 292-93 n. 8.

This court concurs with the reasoning and results of the Butcher and Young courts. The language of the statute at issue is plain and straightforward and the words, therefore, must be accorded their plain meaning. See also Swenson v. Emerson Electric Co., 356 N.W.2d 313 (Minn.Ct.App.1984). Section 2072, by its express terms, provides plaintiff in this case with a private remedy.

B.

Having established that a private right of action does exist for the violation of the disclosure provisions of the CPSA found at 15 U.S.C. § 2064 (and amplified by the regulations at 16 C.F.R. 1116 et seq.), the court turns to the question of the proper statute of limitations to govern this claim under the CPSA. In its memorandum and order of June 28, 1984, this court found that, under Indiana law, this action is governed by Ind.Code § 33-1-1.5-5 which provides in part:

[A]ny product liability action must be commenced within two (2) years after the cause of action accrues or within ten (10) years after the delivery of the product to the initial user or consumer____

It denied, however, defendant’s motion for summary judgment on the basis of the existence of a question of material fact on the issue of fraudulent concealment and invited the parties to brief further the applicable statute of limitations with respect to the CPSA claim.

Pursuant to that request, plaintiffs submitted a brief advocating the adoption of either Ind.Code § 34-1-2-5 or Ind.Code § 34-1-2-1.

The court now reaffirms its earlier holding. Irrespective of the plaintiffs’ pleading labels and theories of recovery, the court finds this to be a products liability action and, thus, Ind.Code § 33-1-1.5-5 is the applicable statute of limitations. Tolen v. A.H. Robins Co., Inc., 570 F.Supp. 1146, 1155-56 (N.D.Ind.1983); Shideler v. Dwyer, 275 Ind. 270, 417 N.E.2d 281, 285-87 (1981).

In addition to its earlier finding that there is a genuine issue of fact as to whether there has been a fraudulent concealment of certain facts that would excuse the application of Ind.Code § 33-1-1.5-5, see Memorandum and Order of this court, June 28, 1984, p. 10, this court finds further support for precluding summary judgment against the consumers under the products liability statute in Whittaker v. Federal Cartridge Corp., Ind.App., 466 N.E.2d 480 (1984).

In Whittaker, plaintiffs brought a products liability action against the manufacturers of rifles and ammunition for injuries received while using the rifle. The trial court granted summary judgment, ruling that the ten year statute of limitations began to run when the manufacturers delivered the rifle and ammunition to retailers, which was thirty-four years and thirteen years, respectively, before the plaintiffs filed the complaint. Id. at 481.

The Court of Appeals of Indiana reversed, holding that the trial court misinterpreted the meaning of Ind.Code § 33 — 1— 1.5-5, thus finding that there existed a genuine issue of fact as to whether the plaintiffs’ complaint was timely filed. The Court stated:

The plain meaning of the statute is that the period of limitations commences at the time the product is delivered from the manufacturer, wholesaler, retailer, or distributor to the first consuming entity. It is clear from the statutory language and definitions that the term “seller,” which “includes a manufacturer, a wholesaler, a retail dealer, or a distributor,” and the term “user or consumer” are mutually exclusive____ The term “seller” encompasses not only manufacturers but also intermediaries. “User or consumer” does not.

Id. at 482.

The facts in this case are strikingly similar to those in Whittaker. In their response to defendant’s motion for summary judgment, plaintiffs indicated that they could not agree with the statement appearing in defendant’s Rule 56 motion that it is undisputed that the Unitrol Model 110 control involved in the case was not manufactured or sold after March 1957. Although they would stipulate that the control at issue was manufactured during the month of March 1956, plaintiffs’ had no knowledge of the date of sale to the “initial user or consumer.” Plaintiffs theorize that the control was sold in 1956 or 1957 to an original equipment manufacturer and they, like the Court in Whittaker, conclude that the original equipment manufacturer could not be considered the “initial user or consumer” of Ind.Code § 33-1-1.5-5. Although plaintiff, Brian K. Wilson’s grandmother purchased the hot water heater approximately one year prior to the accident, that evidence, of and by itself, does nothing to clarify who the “initial user or consumer” was in this purchase. Thus, although this court finds Ind.Code § 33-1-1.5-5 to be the applicable statute of limitations, the issue of fact as to whether the complaint in this action was timely filed precludes its application to this case.

C.

The final issue to be addressed by this court is whether defendant is estopped from litigating the question of whether 15 U.S.C. § 2072(a) creates a private federal right of action for consumers who claim injury as a direct result of an alleged violation of a rule of the CPSC on the basis of offensive collateral estoppel. Plaintiffs premise their argument on the theory that an agency relationship exists, as a creature of the statute, between the CPSC and members of the consuming public alleging fraud practices on the commission. Butcher, 550 F.Supp. at 703. Hence, characterizing the CPSA as the same agent for all plaintiffs alleging fraud on the CPSC by Robertshaw, defendant contends that this court is bound by the decisions of other federal courts who have ruled that 15 U.S.C. § 2072(a) does indeed create a private right of action under the CPSA for individual consumers. See Payne v. A.O. Smith Corp., 578 F.Supp. 733 (S.D.Ohio 1983); Young, supra; Butcher, supra.

This court does not believe that the application of collateral estoppel is proper in this case. Plaintiffs seek to preclude not the redetermination of a factual question but the consideration of a purely legal issue, i.e. whether a private cause of action exists under 15 U.S.C. § 2072(a) for an alleged violation of a CPSC reporting rule.

Under the doctrine of collateral estoppel, once an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is conclusive in subsequent suits based on a different cause of action involving a party to the prior litigation. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5, 99 S.Ct. 645, 649 n. 5, 58 L.Ed.2d 552 (1979). The goals behind such policy are to protect parties from the expense and vexation attending multiple lawsuits, conserve judicial resources, and foster reliance on judicial action by minimizing the possibility of inconsistent decisions. Montana v. United States, 440 U.S. 147, 153-54, 99 S.Ct. 970, 973-74, 59 L.Ed.2d 210 (1979).

There are, however, special circumstances that warrant an exception to the normal rules of preclusion. One such exception is that which applies to “unmixed questions of law.” The Supreme Court of the United States has summarized this exception as follows:

Where, for example, a court in deciding a case has enunciated a rule of law, the parties in a subsequent action upon a different demand are not estopped from insisting that the law is otherwise, merely because the parties are the same in both cases. But a fact, question or right distinctly adjudged in the original action cannot be disputed in a subsequent action, even though the determination was reached upon an erroneous view or by an erroneous application of the law.
Montana, 440 U.S. at 162, 99 S.Ct. at 978 citing United States v. Moser, 266 U.S. 236, 242, 45 S.Ct. 66, 68, 69 L.Ed. 262 (1924). (citations omitted)

Though there is some subject matter similarity between this case and Payne, Young and Butcher, the question of the existence of a private right of action under 15 U.S.C. § 2072 remains a purely legal question subject to various interpretations by courts. The Court of Appeals for the Seventh Circuit has never determined whether a private right of action under the CPSA exists for alleged violations of the reporting regulations of the Commission. Moreover, the courts that have addressed this issue are in conflict. Although a federal district court in Maryland held that a private claim could be stated under the CPSA, Butcher, supra, another federal trial court in the same circuit came to a different conclusion. See Morris v. Coleco Industries, 587 F. 8 (E.D.Va.1984) (no private claim can be stated for an alleged violation of the disclosure requirements of 15 U.S.C. § 2064). To invoke the doctrine of collateral estoppel as plaintiffs suggest would have the effect of precluding reargument of questions of law that would be open to challenge by other litigants. 18 C. Wright, A. Miller & E. Cooper, Federal Practice and Procedure: Jurisdiction § 4425 at p. 244 (1981). Such a result is patently unjust.

Notwithstanding this court’s position on plaintiffs’ use of offensive collateral estoppel against defendant, as indicated above, it is persuaded by the reasoning in the Young and Butcher opinions that a private right of action does exist for violations of disclosure requirements of 15 U.S.C. § 2072 and concurs with that result.

Accordingly, for all the reasons stated above, it is the order of this court that the motion to dismiss Count II of plaintiffs’ complaint for failure to state a claim upon which relief can be granted of defendant, Robertshaw Controls Company, be, and is hereby, DENIED. SO ORDERED.

      . The statute of limitations applicable to product liability actions has been cited by parties to this action as Ind.Code § 34-4-20A-5 (1978). This section number is not the official Indiana Code section number. As enacted by Act 1978, P.L. 141, § 28, this section was assigned the number 33-1-1.5-5 but was transferred to 34-4-20A-5 by the compiler of Burns Indiana Statutes Annotated as a more appropriate location. See Ind.Code § 34-4-20A-1 (Burns Supp.1984), Compiler’s Notes. This court will cite to the official Indiana Code section in this opinion.

      . 15 U.S.C. § 2064 reads as follows:
      (b) Every manufacturer of a consumer product distributed in commerce, and every distributor and retailer of such product, who obtains information which reasonably supports the conclusion that such product—
      (1) fails to comply with an applicable consumer product safety rule; or
      (2) contains a defect which could create a substantial product hazard described in subsection (a)(2) of this section,
      shall immediately inform the Commission of such failure to comply or of such defect, unless such manufacturer, distributor, or retailer has actual knowledge that the Commission has been adequately informed of such defect or failure to comply.
      15 U.S.C.A. § 2064 (West 1982).

      . In Morris v. Coleco Industries, 587 F.Supp. 8 (E.D.Va.1984), Judge Warriner held that no private claim exists for a failure to disclose under 15 U.S.C. § 2064. He opined that sections 2069 and 2070, providing for civil and criminal penalties, are the sole means for enforcing the disclosure requirements of section 2064. He further stated that the requirement to disclose is not a requirement based upon a rule or order of the Commission but rather a requirement predicated upon the statute itself. Id. at 9. This is a conclusion with which this court cannot agree.

      . Ind.Code § 34-1-2-5 reads:
      Any person being under legal disabilities when the cause of action accrues may bring his action within two (2) years after the disability is removed.
      Ind.Code § 34-1-2-5 (West 1983).

      . Ind.Code § 34-1-2-1 provides in part:
      The following actions shall be commenced within six (6) years after the cause of action has accrued, and not afterwards.
      .....
      Fourth. For relief against frauds.
      Ind.Code § 34-1-2-1 (West 1983).

      . The plaintiffs’ complaint was filed in August 1982. Marlin Firearms manufactured the rifle in 1947 and sold it to jobbers and retailers in 1948. Plaintiff Delbert Whittaker’s mother purchased the rifle in 1977 or 1978 from an estate. Federal Cartridge manufactured the ammunition in 1968 and sold it to retailers in 1969. Delbert Whittaker purchased the ammunition from a retailer in 1973. Whittaker v. Federal Cartridge Corp., Ind.App., 466 N.E.2d 480, 481 (1984).

      . Robertshaw was not a party to this action.

      . Plaintiffs also rely on the opinion of United States Magistrate David L. Piester in Guest v. Robertshaw, No. 83-0-451, 52, 53, 54, 55, 487 (D.Neb. June 8, 1984) where collateral estoppel was applied against Robertshaw on the private right of action issue.