188 F. 1017 | U.S. Circuit Court for the District of Eastern New York | 1911
The defendant has been for a’number of years in the employ of the complainant company. Some months since he gave notice of terminating that employment, and exhibited a. contract under which he was to enter the employment of a firm jn a! Western city, to build, put in operation, and conduct a' plant for the making of oxygen for commercial use. The complainant; in connection with its manufacture of dental supplies, has been making oxygen for medical purposes, and has sold some of that product for ordinary commercial uses, some of which are not within medical lines.
There is a grave dispute between the complainant and the defendant as to whether or not the_ defendant had knowledge of processes for making oxygen prior to his employment by complainant. The complainant alleges in its complaint and affidavits, that it, has a number of secret processes, and particularly of secret machines, developed partly by the defendant and partly by other employés of the complainant, and that the defendant is threatening to disclose and make use of these in such a way as to publish or furnish to competitors such secret processes and secret machinery for getting profitable results in the manufacture of oxygen.
The defendant, like other employés, had made a contract to give to the complainant the advantage of anything which he might discover while in their employ, and to keep secret whatever he learned during or by means of such employment. The complainant .alleges in its bill of complaint that, if the defendant is allowed to make use of anything in violation of this contract, the injury will be irreparable, because of the loss of secrecy thereby caused. The defendant alleges an attempt merely to use a method of producing oxygen made known in. this country by the inventors, Du Motay and Marechal, by United States letters patent No. 70,705, on November 12, 1867.
The defendant points to a clause in the contract which he has made with his new employers, under the provisions of which he is to install a plant, using this old patented, but now freely available, process. The complainant answers this by calling attention to a provision in the contract that this old patented process (the Tessie du Motay and Mare-chai process) is to be used, “or any other process devised and put into successful operation by Mitchell,” and “unless the parties hereto shall agree in writing upon such other process.”
As to this, it must be held that the complainant does not, either by his complaint, treated as an affidavit, nor the other affidavits submitted, show a situation upon which an injunction should issue. The defendant is bound, just as much as if he were enjoined by this court, to respect the legal rights of the complainant. He is bound to keep secret, any processes which he learned while in complainant’s employ, and which he agreed should be their property and not disclosed by him. An injunction (as has been suggested) would do him no harm, in the sense of not interfering with w iat he had a legal right to do. .Rut, on the other hand, an injunction would not enlarge tile complainant's rights, and would not protect them in the least; for the defendant would still have the right to enter into his new employment, and, inasmuch as the papers show that the new contract is to be performed outside of the territorial jurisdiction of this court, the only effect of an injunction would be that if the defendant at any time returned into the court, or appeared as a party or witness at final hearing, he could be punished, but the disclosure would have been made and the damage would have been done.
Under such circumstances, the court is not willing to grant an injunction order purely as a threat, or to hold that a man is intending to do what he says he is not intending to do, when there is nothing to determine the matter other than the contradictory statements of the parties.
The complainant is perfectly free to apply for an injunction at the place where the defendant begins his work if he attempts anything there which will be violative of his contract rights. The relief asked by the complaint in this action, namely, a permanent injunction, is
Motion denied.