20 N.Y.S. 110 | N.Y. Sup. Ct. | 1892
This case is invested with questions so interesting, and with consequences so important to all the parties interested, as to fully justify the large expenditure of time and labor which has characterized the trial and submission of the same; and, as introductory to" any discussion of the facts or law, the court desires to acknowledge its obligations to counsel for the very elaborate and careful briefs which have been submitted, and which in their arrangement of facts and reference to precedents have been helpful beyond measure. It would seem that an orderly and intelligent disposition of the case can best be accomplished by a review of the several questions of fact involved, in substantially the same connection as they are presented by the pleadings; and therefore the one which demands consideration at the outset relates to the matter of valuable secrets of trade, which the plaintiff claims to be the owner of. Did the plaintiff possess such secrets, processes, and appliances, and were the same discovered or invented by the defendants, or either of them, or imparted to them, while occupying confidential relations with the plaintiff? That this proposition must be met with an affirmative answer is practically admitted by the defendants, for the very specific alie
But, however satisfactorily this fact is made to appear, another, and an equally important one, is, in my judgment, made quite as apparent, and that is that one or both the parties just named, while in plaintiff’s .service, made certain valuable discoveries, which, under the terms of their employment, and by the strict letter of their contract, plaintiff was entitled to the benefit of. As has already been suggested, both Beichenbach and Passavant were chemists of skill and experience. The services of the former were sufficiently valuable to command a salary of $5,000 per annum, in addition to which he had been presented by the company with a quantity of its stock, upon the sale of which he had realized nearly $20,000. Passavant was receiving a salary of $2,500, and both were intrusted with duties and responsibilities of the most delicate and confidential character. Among these duties was that of constant experimenting, with a view to improving the products of the establishment, and these experiments were continually developing new results, which the company was entitled to the sole enjoyment of. This much of the plaintiff’s claim is, as I understand it, conceded, but defendants now insist that these results were not in the nature of discoveries, because all the agencies employed to produce them, and even the particular properties of these agencies, or some of them, were already known to the scientific mind; and it is argued that nothing can be invented which already exists,.nor can anything be said to be discovered the existence of which is already known. This argument is true, to a certain extent, but it has its limitations. To illustrate: It cannot be truly stated that Alexander Bell invented or discovered electricity, but it
The remaining questions of fact relate to the intentions of the defendants, and their probable effect upon the plaintiff’s business. That defendants, while in its employ, did organize a new company, which was designed to engage in the same general business as that carried on by the plaintiff, is a fact-so clearly established by the proof as to admit of no controversy. Indeed, it is virtually admitted in the answer. It is contended, however, that, although it is their design to engage in this business, they do not intend to make use of any inventions, discoveries, or secrets in which the plaintiff has any proprietary interest. The real significance of this contention can be better understood, perhaps, when it is borne in mind that the main effort of the defendants from the very outset has been to show that the plaintiff has no such inventions, discoveries, or secrets. It would therefore seem to follow, as a logical sequence, that if, as a matter of fact, plaintiff did possess valuable secrets and inventions, which were either disclosed or discovered while defendants were in its employ, they were to be made use of by this rival organization; and this, I think, is the fair construction to be placed upon the acts, language, and conduct of.the defendants. Their operations were carried on with the utmost secrecy, and their interviews with'Millington and Brownell, as detailed by the last-named parties, were almost ludicrous in this particular. Their “prospectus” is so constructed as to relieve defendants Reiehenbach and Passavant from any liability under their contracts, and to make Milburn the responsible party; but the statements therein contained furnish, nevertheless, indubitable proof that the new company is intending to avail itself of certain trade secrets, which, as has been shown, are the property of plaintiff. To particularize, the “Corona film” referred to is said to be “ a cut-sheet sensitive photographic film, made by a new process;” and concerning the “bromide paper,” it is represented that the new company is peculiarly strong by reason of the fact that “we” have “manufactured and sold it for a manufacturer that has at present the market monopoly. ” How, inasmuch as Reiehenbach and Passavant were in plaintiff’s employ when this prospectus was issued, it necessarily follows that the “new process” for manufacturing film and bromide. paper was either one that was then in use by plaintiff, or else it was one which had been discovered by them, or one of them, while in plaintiff’s employ, and in either case it was the property of the plaintiff. The probability is that the “new process” is the same as that concerning which so much evidence has been given, and which the defendants now insist is in no sense new. To briefly summarize, then, the established facts of this case, it appears that the plaintiff is the owner of valuable trade secrets, which were either discovered by one or more of the defendants, or necessarily disclosed to them, while occupying a confidential relation towards the plaintiff; that, as to such trade secrets as were discovered by either Reiehenbach or Passavant, they have undertaken and agreed to give plaintiff the exclusive property in and control over the same; and that, in violation of this agreement, they are now proposing to make use of them, or some of them, in such a manner as to materially injure the plaintiff’s business. With these facts established, the application of the legal principles which must govern the disposition of the "case does not appear to be a very formidable undertaking. It may be safely assumed at the outset, I think, that whatever remedy plaintiff may have does not reside in a court of law. The very nature of the case, the peculiar character of the injury liable to be inflicted, and the incalculable damages which