122 Misc. 234 | N.Y. Sup. Ct. | 1924
On February 17, 1909, Frederick L. Fuller, an able and experienced inventor, made a contract (Exhibit A of the
This plaintiff did exactly what is thus described. The two recitals of Exhibit A, heretofore quoted, practically paraphrase this opinion. Plaintiff bound itself to keep Fuller only a year. But in hiring him as an inventor and giving him insight into the secrets of its business, it clearly contemplated and provided for the possibility of a longer relationship. It aimed to secure whatever Fuller’s ingenuity created within one year, not merely from the initial term, but from the “ cessation of his employment and the severance of his connection with the company.” The longer he served, the more knowledge he had of the processes employed and the more reason there was to achieve this aim.
The whole instrument must be considered to determine “ what the parties intended to do or sought to accomplish.” Fleischmann v. Furgueson, 223 N. Y. 235, 239. They intended that Fuller should surrender whatever cash register inventions he made within a year after he actually ended the confidential relationship which prompted the covenant. They sought to accomplish that plaintiff and not some competitor should have the fruits of what Fuller might conceive while in plaintiff’s employ but execute shortly thereafter. The purpose of the contract is effectuated only by a construction which holds him subject to its terms for one year after he in fact left.
Many expressions in the contract fortify this conclusion drawn from its general tenor. Fuller covenanted to devote himself to the company “ while this contract is in effect; ” to be in a confidential position “ while in the employ ” of said National Company and to transfer to plaintiff inventions which he may make “ during the term of his employment by said company.” These phrases indicate that a relationship not necessarily coincident with the assured initial year was contemplated. The recital is that it would be unfair for Fuller to take advantage of confidential information “ after the termination of his active employment,” not after the expiration of the one-year term. Reference is made to Fuller’s leaving, “ the said National Company being still willing to employ said Fuller at a salary equal to that he is then receiving.” For the first year he was to receive $5,000. This language would be pointless
Authorities cited as criteria for interpretation of this contract, too numerous to be discussed within the limits of this opinion, have aided in the discharge of the fundamental task of ascertaining and effectuating the actual intent of the parties.
Moreover, the contract remained effective for one year from September, 1917, not only ex proprio vigore, but also by renewal implied from acts of the parties.
At the end of the first year Fuller and his immediate superior, Muzzy, discussed future relations. Plaintiff contends that this conversation continued the essential terms of the contract and defendant claims that it abrogated them. Muzzy testified that Fuller asked for a definite term contract and was told that the company would not give it and that Fuller stayed on as an employee at will. Fuller’s testimony is in substantial accord, except for the immaterial difference that he says he was to continue to work “ by the month ” and except that he inserts into his narrative of the conversation the words “ in that case I am free to go where I please.” The use of these words is denied by Muzzy. Primarily Fuller and Muzzy were intent on continuing the employment. The use of the disputed phrase is as improbable as would be Fuller’s recollection of it after thirteen years. Nor can I attach to its haphazard interjection the importance claimed for it by defendant that it effected an express cancellation of the protective clauses of Exhibit A.
In Williston on Contracts (§ 90, p. 155) it is stated: “Where a contract of employment for a definite time is made and the employee’s services are continued after the expiration of the time without objection, the inference is that the parties have assented to another contract for a term of the same length with the same salary and conditions of service; following the analogy of a similar rule in regard to leases.”
If such continuance implies that all provisions of the contract remained in force, agreement to continue with express change of only the provision as to term preserves the other provisions. Some provisions must of necessity have been imported into the new arrangement. Obviously Fuller was still to be an inventor, not a menial; he was to give to his employer his inventions; he was certainly not to betray its confidence. With equal appropriateness he was to respect the restrictive covenants explicitly recited to be so essential to the relationship.
In Stern v. Avedon & Co., Inc., 194 App. Div. 433, 435; affd., 231 N. Y. 546, a tenant held over, but with a new agreement as to rental. The question was whether “ the tenant held under a lease implied by law for the term of one year at an increased rental, but otherwise subject to the covenants and conditions of the original leases.” Justice Page writes: “ It is to be noted that in the conversation between the landlord and the tenant herein nothing was said as to the term, nor as to the payment of the rent, whether monthly, quarterly, semi-annually in advance or at the end of the term whatever that might be. The original leases were carefully drawn and contained numerous covenants and agreements.” He then
Similarly Muzzy and Fuller said only that Fuller was to continue from month to month. Unless they understood that this continuance was otherwise under the provisions of his initial employment, their conversation was meaningless. And in actual practice, whenever question arose as to the obligation of Fuller, it was the 1909 contract that was examined. Fuller handed it to the defendant when he was negotiating to enter its employ. Glass, patent attorney for defendant, and Beust, plaintiff’s attorney, examined it to determine the duty owed by Fuller to plaintiff after he was in Remington’s employ. In July, 1918, plaintiff wrote to Fuller inquiring whether his employment with the defendant (then not yet openly in the cash register business) was not in violation of the contract which the company “ has with you under date of February 17, 1909.” Fuller, after consulting defendant’s counsel, claimed not that the 1909 contract was inapplicable, but only that his conduct “ violates and has violated no agreement between the National Company and me.” These acts do not indicate belief that the contract was ended in 1910. Defendant having employed Fuller, under circumstances hereafter discussed, knowing of the 1909 agreement and of his continuance with plaintiff, was chargeable with knowledge of the terms of his continued employment, which reasonable inquiry must have readily disclosed.
Defendant contends that plaintiff has not shown compliance with the condition, “ said National Company being still willing to employ said Fuller at a salary equal to that he is then receiving.” The proof on this subject is necessarily meagre. The question is one of fact. There is no dispute in the evidence. In August, 1917, Fuller secretly began negotiation with the Remington Company, then contemplating entering into the cash register business.
Except for a defense of laches, hereafter to be considered, what has been said determines this controversy. The importance of the cause and the great amount of argument and testimony concerning claims asserted by plaintiff to two separate features of defendant’s machine require brief consideration of these claims.
In the patent application No. 263, 125 (and the corresponding British patent) representing defendant’s machine, there is used in connection with the adding mechanism a differential cam. This is a plate with a slot in which works a pin that thus causes the cam to carry on to a subsequent member motion imparted to it from a prior member that actuates the pin. The beginning and end of this cam slot are concentric with the arc on which the pin moves. At these points the pin moves, therefore, without pressure against the sides of the slot and thus imparts no motion. This device is called a dwell. While in plaintiff’s employ Fuller made four drawings (Exhibits 13 to 16 inclusive), which show an initial and final dwell. Plaintiff claims the idea as an invention made by Fuller while in its employ. The dwell, however, was an ordinary well-known device for keeping a portion of the mechanism in rest while another portion performed a given function. Use of both an initial and a final dwell was also made in an invention made by Fuller in conjunction with one Robertson and already assigned to plaintiff. Fuller-Robertson application No. 394, 974. They were not an invention or improvement, patentable or unpatentable. They were no more significant than would have been indication by the draftsman of two bolts or two nails.
Plaintiff’s second claim is that a so-called paper feed and shift mechanism embraced in the Remington patent application No. 263,125 is an improvement which “ depends for utility ” upon a mechanism disclosed in the National application No. 299,112, invented by Fuller, and, therefore, plaintiff’s property by virtue gf a elause ip Exhibit B giving it any inventiqn of Fuller’s which
There remains to consider defendant’s claim that plaintiff has been guilty of laches which defeats its right to recovery. Judge Gray in Treadwell v. Clark, 190 N. Y. 51, 60, said: “ We have held it to be a matter of serious doubt whether the equitable doctrine
Plaintiff cannot lose a right by mere delay without any element of estoppel. The tests are clear. Was the defendant misled by plaintiff’s acquiescence? New York Bank Note Co. v. Hamilton Bank Note Co., 28 App. Div. 411, 419. Did the person sought to be estopped “ do some act or make some admission with an intention of influencing the conduct of another, or that he had reason to believe would influence his conduct, and which act or admission is inconsistent with the claim he proposes now to make? ” New York Rubber Co. v. Rothery, 107 N. Y. 310, 316. Has the defendant itself failed to do what a “ reasonably prudent man would do in the exercise of an ordinary diligence? ” Rogers v. Adams, 119 Misc. Rep. 77, 81; affd., 206 App. Div. 739.
This defendant was not misled because it had full knowledge of plaintiff’s rights and position. It hired Fuller away from plaintiff. With him it hired three other former employees of plaintiff. They were to get $150,000 on condition that their cash register design should not infringe upon any patent. Defendant did not impose the condition that the new design should not violate the 1909 contract, of which it knew. In July, 1918, plaintiff wrote Fuller reminding him of the restrictions in his contract and continuing: “ If I am wrong in my impression as to the character of your present employment, which I understand to be cash register development work, I know you will be good enough to advise me.” Fuller immediately showed this letter to defendant’s representative, who stated that it was “ all right,” and Fuller then replied that he was doing nothing to breach the contract. Here was unequivocal notice to defendant itself that plaintiff was asserting, not abandoning, its rights under the 1909 contract.
Likewise, plaintiff cannot be estopped because it was itself deceived and acted reasonably in the light of the information it had. When Fuller left for his vacation he gave, no intimation of his new employment. He then wrote to plaintiff’s president a letter of appreciation, with no word of intention to enter into competition. As late as March, 1918, he wrote letters to plaintiff’s secretary referring to himself as being engaged in defendant’s general business of gun construction, He was then actually working on defendant’s cash register. His explanation of these letters as a joke is unconvincing. Thereafter plaintiff heard conflicting rumors as to whether the Remington Company was going into the cash register business and wrote the letter of July, 1918, to Fuller. Plaintiff’s first knowledge of any assignment of patents by Fuller to defendant was in February, 1920, when one of its attorneys
Defendant was not misled to its detriment by reliance on any act or omission of plaintiff. It acted in hostility to plaintiff’s known rights. Whatever delay there was did not harm defendant. In the language of Judge Collin in Rothschild v. Title Guarantee & Trust Co., 204 N. Y. 458, 461: “ The law does not withdraw its remedies from a person against whom a wrong is committed merely because he in silence and without proclamation or complaint recognizes and endures the wrong.”
In Todd Protectograph Co. v. Safe-Guard Check Writer Co., 291 Fed. Rep. 613, 616, Judge Learned Hand writes: “ The defendant in such cases is a wrongdoer, and he must not escape merely because the plaintiff does not at once raise hue and cry. * * * I cannot regard a man as getting a vested interest in the right to commit a tort, because merely of his victim’s inaction within the statutory period.”
Plaintiff waited to strike until it was in a reasonably safe position to prove the commission of the wrong. -Its slight and harmless delay does not subject it to a forfeiture of its property. " Judgment for plaintiff.
Judgment accordingly.