80 N.Y.S. 811 | N.Y. App. Div. | 1903
The facts, so far as they bear upon the questions involved upon this appeal, are not in dispute. The plaintiff, who was an inventor and expert machinist, together with two other men, Browne and Levis, about the year 1895, organized the defendant corporation, with a capital stock of $200,000. Sixty thousand dollars of the paid-up capital stock of the corporation Was transferred to those three individuals, upon the express consideration ¡that they would transfer to it their business and all the machinery and tools owned by them and used in connection therewith, which they did, and also in consideration of their agreement to assign and transfer a certain patent for improvements in paper box machines which the plaintiff had
Under this arrangement the plaintiff continued in defendant’s employ for about three years and until about March, 1898, as did also Browne who assisted him in organizing the defendant, when both resigned from their positions with the defendant, and organized or entered into the employment of a rival corporation in the city of New York. During the three years the plaintiff was thus in the employ of the defendant he invented certain new and useful improvements of value to the defendant in its business, which were then or afterwards patented, and which are the same described in the judgment. Plaintiff’s inventions made during said three years while in defendant’s employ, whether they had ripened into patents or were merely in the form of applications for patents, although under the express agreement made between the plaintiff and defendant they belonged to and were its property, had not been transferred or assigned to it, and the defendant did not have the legal title thereto, but they stood in the name of the plaintiff. Upon leaving the defendant’s employ the plaintiff assumed to assign and transfer them to other parties without any consideration being paid therefor, in disregard of defendant’s right and in violation of the agreement which he had entered into with it.
Shortly prior to September 5, 1898, the date of the contract in question, plaintiff’s venture in the city of New York having proved unsuccessful or unsatisfactory, he returned to the city of Rochester and again sought employment with the defendant. He acknowledged that he had violated his agreement; that he had assumed to transfer the inventions made by him'and which of right belonged to
The contract in suit was then, executed.. The purpose for which it was made is perfectly plain. The defendant expected that by the assignments from the plaintiff, which the contract provided for, it. would secure the legal title to the property of which it was then the. equitable owner, and if that could thereby be accomplished it was willing to give employment to the plaintiff for at least one year, and a ope-quarter interest in the property which it then owned as against him, when such, .term of employment should end. The plaintiff on his part expected to and did secure employment, and he-also expected to secure a. one-quarter interest in his inventions upon the termination of his employment,. provided the assignments executed by him to the defendant were effectual for the purpose intended. We may not assume that it was the intention of the ■ parties that the defendant should- give to the plaintiff an interest in this property,, in case it turned out that he was powerless to perfect defendant’s legal title to the same, or to do any other act in respect to snch property which would be of advantage to the defendant. This was exactly the situation which developed.. The defendant discovered that the assignments made by the plaintiff, in violation of his agreement with it, had been recorded in the Patent Office by the respective assignees; that they each claimed to be the owner of the patents or inventions so assigned to them, and denied that the plaintiff or the defendant had, as against them, any .right, title or interest in or to the same. Therefore the defendant could not obtain the legal title to the inventions in question under - the contract which it had executed, or by means of anything . the plaintiff might or could do in the premises.
Thereupon, and in October, 1898, the - defendant commenced an action .in the Supreme Court, in which the.plaintiff and all his alleged assignees were made defendants. It was alleged in substance in ■ the complaint that the defendant (the plaintiff in that action) was the owner of the inventions in question, by reason of
Thus it has been judicially determined that at the time the contract in suit was executed, the plaintiff had no interest in the inventions in question which he could assign or transfer to the defendant. It has been judicially determined that at that time the defendant was the owner of such inventions, and that it, as matter of right, was entitled to an assignment by the plaintiff and his assignees of any and all interest which they or any of them claimed to have therein, wholly independent of the contract in suit, to the end that the defendant might thus acquire the legal as well as the equitable title to the property which it owned. Plaintiff’s assignments of the invention in question to the defendant amounted to nothing; were no better than so much blank paper, because, as determined by the judgment of the court, he had nothing to assign ; and such assignments were equally ineffectual to perfect the legal title of the defendant in and to such inventions. What was expected to be accomplished by such assignments failed, and the defendant was, therefore, required to resort to a suit in equity to accomplish the purpose for which the contract in suit was made.
It should be stated in this connection that at the time of the execution of the contract in question the legal title to a one-half interest in one. of the patents in suit was .in plaintiff’s name, the other one-half interest having been assigned by him to Browne’s wife. Such assignment, however, was made without consideration, and that patent, like all the others involved, in fact belonged to the defendant, by virtue of the agreement made when the defendant
Upon the foregoing state of facts, we think it must be held that the agreement made by the defendant to assign to the plaintiff a one-quarter interest in the inventions and patents described in the judgment was wholly without consideration and void., ' The proposition cannot be more pointedly put than by saying that at the time the contract was made which provided for an assignment by the plaintiff to the defendant of such inventions, he had nothing •to assign; owned no. inventions or patents and had no interest in any. He was not in a position to do any act in connection with the .subject-matter of. the contract, which could be of benefit to the -defendant, that he was not legally and morally bound to do. independent of such contract, and, as matter of fact, the defendant was -obliged to accomplish through other means the purpose for which the contract was .executed, to wit, the bringing and - successfully maintaining an action in the Supreme Court, and which could not have been accomplished in any other manner, so far as the plaintiff was concerned.
In. full compensation for his services for at least one year the plaintiff was to and did receive from the defendant thirty-five dollars per week. • For vesting in the defendant his interest in the inventions in question the plaintiff was by the terms of the contract to be reinvested with a one-quarter interest upon leaving the defendant’s employ. He had, no interest in such inventions which by any act of his. he could vest in the defendant; he did not even have the legal title to them, as it was supposed he had when the contract was executed, and so by his assignment the defendant obtained nothing, and could not obtain anything, by virtue of that part of the contract which this action was brought to enforce.
It is claimed, however, and it is stated in the opinion of the learned trial court to be a fact, that, it was a part of the agreement-between the parties, although in no manner alluded to or expressed in the written contract, that the defendant should commence an action or actions to enforce its rights in and to the patents or inventions in question, acquired by it by virtue of the original agreement, and “ that the plaintiff would be a witness for -the plaintiff (this defendant) in the action or actions which were to be brought,.
The agreement which it is claimed was made between the parties, although not expressed in the written contract, and which it is now urged furnishes an adequate consideration therefor, is repugnant to every instinct of propriety and justice, as it in effect provides for
In the case of Lyon v. Hussey (82 Hun, 15) the rule is concisely stated in the head note as follows: “ A contract to furnish evidence to establish the claim of one of the parties to an action about to be commenced is against public policy and will not be enforced.”
Justice Van Brunt, in writing the opinion for the court, said : “ But it may be proper to call attention to the fact that part of the contract, damages for the breach of which this action was brought to- recover, was to furnish' evidence to establish the claim of the defendant in a litigation to be commenced. It is clear that such a contract is against public policy. The recognition of contracts of this character would be the introduction of all sorts of fraud and deception in proceedings before courts of justice, in order that parties might receive compensation out of the results of their successful manufacture of proofs to: be presented to the court, thus holding out a premium upon subornation. The mere statement of the proposition seems to show that such a contract could never be recognized in any court of justice.”
We think the language of the learned justice which we have quoted is especially applicable to the case at bar.
Having concluded that that part of the contract which this action was brought to enforce is void because without consideration, we deem it unnecessary to consider any of the other questions involved upon this appeal.
It follows that the judgment should be reversed and a new trial granted, with costs to the appellant to abide event.
Spring, Williams and Hisoock, JJ., concurred; Nash, J., not sitting.
Judgment reversed and new trial ordered, with costs to the appellant to abide event upon questions of law only, the facts having been examined and no error found therein.