216 F. 401 | W.D. Mich. | 1908
(sitting by designation). The court is indebted to counsel for their painstaking abstracts of the voluminous record. They have discussed the case with ability. The conflict of evidence, however, as to many points, is so sharp, and the interest of many witnesses is such, that I read the entire record to enable me the better to determine the questions of fact.
Whether the complainant’s machines and processes of manufacture were secret or not is the 'first question which I shall consider.
J. E. Hamilton testified that strangers were always prevented from going through the complainant’s factory, that they might not see its special machines and methods of work. He says there were shop secrets which he did not wish to give to the public; that he further wished to avoid interference with his workmen; that every foreman in the factory talked to him a good many times about the admission of strangers; and that it was thoroughly understood between him and them that the principal reason for the exclusion of strangers was to prevent disclosures as to special machines and methods of manufac
Objection was interposed to Wiese and Kaufman giving their understanding, on the ground that it was the statement of a conclusion. None of the last three witnesses testified when or from whom he obtained his understanding of the purpose of the pass system, or on what facts it rested. None of the last four witnesses testified that Hamilton instructed him that the exclusion of visitors or the purpose of the pass system was to hold secret any of the complainant’s machines or methods of manufacture. Wiese and Kaufman make no mention of having received from him any instructions whatsoever.
Considering now the defendant’s witnesses, Gagnon, the complainant’s former draftsman and designer, testified that all he knew about the pass system, and the only reason known to him for its existence, was that the employés should not be diverted from their work by visitors. Anton Kaufman, a former foreman of the complainant, testified that the object of the pass system was to avoid interference with workmen. Neither of these witnesses was interrogated as to the source of his knowledge regarding the purpose of the system. Kaufman never heard it said by Hamilton, or the superintendent, or any foreman, that the special machines were to he kept from the eye of strangers, nor did he ever hear such idea expressed. Kurtz, also a former foreman of ¡complainant, testified that the pattern room was not kept secret, that both workmen and strangers were admitted to it, some having passes and some not, and that the public was sometimes excluded and sometimes not. His testimony does not consist with the complainant’s position.
The conflict in the testimony of the above-named witnesses is such that the consideration of other facts and circumstances disclosed by the record becomes important.
Although where an idea, or trade secret or system, cannot be sold or negotiated or used without a disclosure, it would seem proper that some contract should guard or regulate the disclosure, otherwise it must follow the law of ideas and become the acquisition of whoever receives it (Bristol v. Equitable Life Assurance Society, 132 N. Y. 264, 267, 30 N. E. 506, 28 Am. St. Rep. 568, citing Peabody v. Norfolk, 98 Mass. 452, 96 Am. Dec. 664), it is not claimed that there was any
Frank Kaufman, on cross-examination, after testifying as to the endwood, reglet, disc joiner, edge rounding, slat slotting, case boring, and case framing machines, stated that the only devices connected with any of those machines that he had not seen used on some kind of a machine for some purpose were the putting of sandpaper on a hard surface instead of a yielding one, and the use of the centering device in the boring machine.
Hamilton testified regarding the endwood machine that the one feature more than any other essential to its success is “the cementing or gluing of paper directly onto a hard and unyielding roll.” Regarding the reglet machine he said, “the principal feature of this machine is in the unyielding surface of the drum, the same as in the endwood machine,” and again he testified, regarding the endwood, disc joining, reglet and slat sizing and smoothing machines, that their principal feature is the use of sandpaper upon a hard, unyielding surface, which permits the cutting away of the stock instead of its mere smoothing. Again he testified, “The germ of the machines’, of all these machines, our special machines, is the sandpaper.”
The application, however, of sandpaper directly to the surface of a machine for cutting as well as smoothing purposes was practiced before any of the complainant’s machines were devised or placed in service, and was superseded by the later method of interposing a cushion between the sandpaper and the machine’s metallic surface. The principal feature of these machines was not novel, but well known. The testimony of Spencer, whom I believe to be a witness that is fair-minded, intelligent, and of large experience, places this question of want of novelty beyond the realm of doubt. If it be conceded that the peculiar adaptations devised by the complainant, such for instance, as the centering device on the center boring machine, or the iron block used as a chip breaker in the case frame routing machine, cannot be lawfully used by others who did not originally invent or devise the same, it is clear that the machines, stripped of complainant’s respective peculiar devices,.may be used by others, and the evidence shows that other effective devices, accomplishing the same purposes, readily suggest themselves to a mechanic of ordinary skill. Eliminating such peculiar devices, none of which appear to have been the principal feature of the particular machine to which it was attached, Gagnon, Kaufman, and Kurtz might have acquired knowledge of the principal features of the machines in question in the employ of any wood manufacturer doing a considerable business.
“Tlie property in a secret process is tlio power to make use of it to the exclusion of the world. If the world knows the process, then the property disappears. There can be no property in a process, and no right of protection, if knowledge of it is common to the world. It would be a violation of every right of "an employé of a manufacturer to prevent the former from using, in a business of bis own, knowledge which he acquired in the employ of the latter when he might have acquired such knowledge in the employ of other manufacturers. Indeed, a contract not to do so would probably fail of enforcement because in restraint of trade.”
To grant to the complainant the exclusive use of a form of machine in common use, like, for instance, the disc joiner, the center boring machine, or any machine used for cutting or smoothing by means of gluing sandpaper to a metallic surface, would foster monopoly and exclude others from the use of well-known and much-used prior devices. To entitle it to protection against the use of its machines and methods of manufacture by others, it must appear that they are in fact secret, for, as said in Hopkins on Trade-Marks, 226:
“In every case where the plaintiff seeks protection for a trade secret, it must appear that it really is a secret. If a so-called secret process is lawfully known to others in the trade, no one will be enjoined from disclosing or using it.”
See, also, Cincinnati Bell Foundry Co. v. Dodds.
So, too, to enforce on the individual defendants the duty of preserving the secrets, if any, pertaining to the complainant’s business, it must be shown that they knew that its methods of manufacture and machines were in fact secret.
In the Cincinnati Bell Foundry Co. Case, supra, the rule is thus stated :
“If there was a secret * * * and he came to know it because he was foreman and had to know it that it might be used, and Knew that it was a secret, then I am inclined to think that his obligation to preserve such secret as the property of his employer must be implied, even though nothing was said to him on the subject.”
In Westervelt v. National Paper, etc., Co., 154 Ind. 673, 678, 57 N. E. 552, it was said:
“If a person employs another to w.ork for him in a business in which he makes use of a secret process, or of machinery invented by himself, or by others for him, but the nature and particulars oB which he desires to keep a secret, and of which desire on the part of the employer the employé has notice at the time of his employment, even if there is no express contract on the part of the employé not to divulge said secret process or machinery, the law will imply a promise to keep the employer’s secret thus intrusted to him.”
Considering all the facts and circumstances developed by the record, the complainant has not, within the rules of evidence, established that its machines and methods of work were in fact secret, or that the individual defendants knew or had cause to believe th*<t they were secret or intended to be held as such.
The Tubbs reglet machine is in such an exact similitude to the complainant’s that it is strongly urged that the blueprint from which the
It is conceded that a considerable part of the goods manufactured by both corporations are standard goods, but it is urged that the defendant company not only needlessly imitated the New Departure
Without enumerating the differences between the two catalogues, suffice it to say that tiiey are so apparent as to preclude belief on the part of the customer of ordinary intelligence that the defendant’s catalogue is an advertisement of the complainant’s wares, and there was consequently no invasion in this respect of complainant’s rights, nor was there any such invasion, on the facts of this case, by the defendant, by its copying from the complainant’s catalogue and circulars descriptive matter, weights, dimensions, and the like, in so far as that was done. Potter Drug & Chemical Corp. v. Pasfield Soap Co. (C. C.) 102 Fed. 490.
Nor is the complainant entitled to relief because its catalogue was used by the defendant’s traveling salesmen, as there is no evidence that such use was fraudulent or illegitimate. Lamb v. Evans (1892) 3 Ch. 462, 469, 470.
There are other charges of unfairness, even of dishonesty, a de-+ailed discussion of which would unduly prolong this already iengthy opinion. Lomack’s conduct in obtaining bits through another from complainant’s factory was done at his own instance. Knowledge of his conduct has not been brought home to any of the defendants, and they should not be held responsible therefor. Although the bartender, Kurtz, did not know the contents of the paper package which he delivered to the defendant Kurtz, the evidence is strongly suggestive that such defendant sought and obtained routing bits from the complainant’s factory through connivance with one of complainant’s employes. It is not shown, however, that the defendant company ever used them or is using them now. If such bits were so obtained, the remedy, under the facts of the case seems to be in damages. National Tube Co. v. Eastern Tube Co., supra.
As to the charge made concerning other bits, spying and trespassing on complainant’s factory, the purloining of drawings, detail books, blueprints, Hebrew type patterns, dimension books, page specimen books, the effort to secure slide patterns, steel runs and moldings, and the inciting of strikes, the evidence is conflicting. The complainant’s case rests on the charge of fraud. The presumption is in favor of the fairness of the conduct of the defendants and of the innocence of the accused, and the burden of proof is upon the party asserting the fraud to establish it. As regards the matters above mentioned and other charges concerning which testimony was offered, the proof is not sufficiently clear, to justify the granting of the relief requested.
The parties to this action have waged a needlessly bitter rivalry. Persons connected with the defendant company have pressed close to the line of demarcation between fair and unfair competition. Some, of their conduct is not commendable, but I do not believe the situation justifies the granting of an injunction. Some explanation for their conduct may be found in the threat of the complainant’s chief officer— a threat which he would not say he did not make — that he would destroy the defendant company or bankrupt himself. Such a threat and action taken to render it effective cannot be approved.
An order may be entered dismissing the bill, at complainant’s costs.