168 Misc. 806 | N.Y. Sup. Ct. | 1938
Any attempt to review the evidence in detail would make this memorandum too long, and it would be of no benefit to the parties.
The fact that the plaintiff had not obtained a patent at the time did not justify the defendant Powell in appropriating plaintiff’s invention. (Nilsson v. DeHaven, 47 App. Div. 537; affd., 168 N. Y. 656; Bernard v. Huebel, 33 Misc. 611; Hoeltke v. Kemp Mfg. Co., 80 F. [2d] 912, 922). Inasmuch as I have reached the conclusion that a confidential relationship did exist, the burden of proof probably shifted to Powell to show that there was no fraud or deception. (Cowee v. Cornell, 75 N. Y. 91, 99; Allen v. LaVaud, 213 id. 322, 326.)
I reach the conclusion, therefore, that the plaintiff is entitled to an injunction restraining the defendants from continuing to manufacture and sell the muffler and for an accounting, unless the plaintiff is barred from maintaining this action by reason of the various defenses urged by the defendants:
Second, that confidential disclosures are entitled to the protection of courts in equity only to the extent that the substance thereof was not open to the public at the date of the disclosure.
Third, that the action is barred under the rule of election of remedies because of the action on contract brought by the plaintiff against Powell in January, 1934.
Fourth, that the action is barred by the Statute of Limitations.
These defenses will be discussed in the order above set forth.
First. I do. not think that under the evidence in this case the defense of “ shop rights” has been established. There is no evidence that McNamara ever worked in the defendant’s plant as a mechanic, or that he at any time had supervision over the mechanical work in the plant. He was simply a traveling salesman. McNamara at all times claimed the invention was his own and never directly or indirectly conceded that Powell had any interest therein, and never consented to Powell’s use of same, except upon Powell’s promise that he would pay him for such use. The evidence in Heywood-Wakefield Co. v. Small (87 F. [2d] 716) was much stronger, but even there the court held that there was no shop right, as a matter of law. (See, also, opinion of Examiner of Interference, U. S. Circuit Court of Appeals, record pp. 442, 450; opinion IT. S. Patent Office Board of Appeals, same record, pp. 453, 455.) Powell has always contended, and now contends, that the invention was his own. It impresses me, therefore, that whatever Powell did in regard to the invention was for his own benefit. (Texas Co. v. Gulf Refining Co., 13 F. [2d] 873, 877; Small v. Heywood-Wakefield Co., 13 F. Supp. 825, 830; Heywood-Wakefield Co. v. Small, 87 F. [2d] 716, 719.) I cannot understand under the circumstances and under these decisions, how Powell can now claim a shop right. I think this defense must fail.
Second. In my opinion, it cannot be held that McNamara’s idea was one that was open to the public at the time of the disclosure to Powell. It may be argued that McNamara’s idea was a comparatively simple one — that is, it appeared simple after it was worked out. But that same argument could be said of thousands of inventions upon which patents have been obtained and thereafter protected under the patent law. Every one in his or her experience has been impressed with the simplicity of many inventions, and wondered why some one had not thought of the same idea before, but the public would never have had the benefit of these inventions except for the fact that some person with imagination and ingenuity had thought out the plan or idea. (See Smith Corp. v. Petroleum Iron Works Co., 73 F. [2d] 531, 538;
If the invention was not new or novel, or if it was open to the public domain, why the long and presumably expensive litigation to protect an unpatentable or worthless invention? Powell cannot have much complaint if the court accepts his expert opinion in the premises. (Larson Co. v. Wringley Co., 253 Fed. 914, 918.) I do. not think the decisions in Booth v. Stutz Motor Car Co. (56 F. [2d] 962) and Lueddecke v. Chevrolet Motor Co. (70 id. 345) are contrary to this conclusion.
It may be true, as defendants contend, that they are not bound by the proceedings in the Patent Office or in the suit between Powell and McNamara in the Federal court, under the provisions of section 4915 of the United States Revised Statutes. But conceding this proposition, I am still of the opinion that under the evidence in this case it must be held that McNamara’s idea was new and novel, was patentable and was not within the public domain.
Third. The affidavit of the defendant Powell, verified April 23, 1935, sets up the bringing of the action by the plaintiff against the defendant Powell on or about January 16, 1934, on contract, wherein judgment was demanded for $180,000, based upon an alleged contract wherein it was claimed that Powell had agreed to pay McNamara for the use of the muffler, and that thereafter McNamara obtained an order of the Supreme Court, upon his own motion, to discontinue the action. The affidavit of McNamara, verified May "2, 1935, admits that such an action was commenced and finally discontinued on his own motion, without prejudice. Both of these affidavits were contained in the record when this case was before the Court of Appeals in April, 1937. (McNamara v. Powell, 273 N. Y. 408.) It must be assumed that the Court of Appeals considered these affidavits and found contrary to the contention of the defendants.
Defendants’ motion for a nonsuit is denied, with an exception to defendants.
The plaintiff’s objection to the testimony of the witness George B. Upton is overruled and the plaintiff’s motion to strike out the testimony of said witness is denied, with an exception to plaintiff in each instance.
Plaintiff is granted an injunction and an interlocutory judgment in accordance with the findings of fact and conclusions of law, made and signed under date of July 7, 1938.