Franke v. Wiltschek

• Decision Date: 09 December 1953
• Docket Number: Docket 22843.,No. 96,96
• Citation: 209 F.2d 493
• Parties: FRANKE et al. v. WILTSCHEK et al.
• Court: U.S. Court of Appeals — Second Circuit

209 F.2d 493 (1953)

FRANKE et al. v. WILTSCHEK et al.

No. 96, Docket 22843.

United States Court of Appeals Second Circuit.

Argued October 8, 1953.

Decided December 9, 1953.

Sidney J. Leshin, New York City, for defendants-appellants.

William D. Burrows, New York City (Eyre, Mann & Burrows, New York City, on the brief), for plaintiffs-appellees.

Before CHASE, Chief Judge, and CLARK and FRANK, Circuit Judges.

CLARK, Circuit Judge.

This action seeking an injunction and an accounting of profits received is based upon the alleged misappropriation by defendants of trade secrets learned during and in consequence of a confidential relationship existing between them and the plaintiffs.

From 1943 to 1951, plaintiffs, citizens of New Jersey, manufactured certain compressed cotton bath sponges for Schiaparelli. The finished product was a pellet which when dropped into water expanded into a piece of cotton about four inches wide by six inches long. The process and utility of thus compressing sheets of unwoven fiber had been known to the art since at least 1913.

In early 1951, plaintiffs commenced experiments with the similar compression of woven fibers, and by September of that year had produced the product here in issue, a perfumed face cloth, compressed into the shape of a small drum which when immersed in water opened up to its original shape. The product was put on the market in October, under the name "Quettes," and sales multiplied rapidly thereafter.

In December of that year defendant Wiltschek, having seen the product in a New York store, called plaintiffs and sought an interview, representing that he and his partner, defendant Blatt, were interested in selling the item. Plaintiffs initially were not interested, but Wiltschek persisted and after several more calls a meeting was arranged between plaintiffs and Wiltschek and Blatt. The latter came to the plant and discussed the question of representing plaintiffs. In order to persuade plaintiffs of the desirability of the arrangement they claimed a sales force of thirteen men, though in fact they had none other than themselves. As the parties neared agreement, these defendants, at their own solicitation, were shown the process (thereby also learning its cost), the capacity of the plant, and some of plaintiffs' sales records in order to help them in effecting sales and assure them that supply would be adequate and the product attractive. Shortly thereafter, in late December, an agreement was reached whereby Wiltschek and Blatt were to represent plaintiffs for a trial period while they tested the appeal of the product with their clientele. Compensation was agreed upon and they were given samples, displays, and signs.

By mid-February these defendants had terminated the agreement and returned some of the sales equipment, stating that the line would not sell. It is doubtful whether they ever in good faith intended to sell plaintiffs' product, but the trial court found on ample evidence that by the end of January they had resolved to copy the product and market it for their own profit. In March, defendant Betti Pearson, Inc., a Massachusetts corporation of which Blatt and Wiltschek were directors and vice-presidents (their wives holding half of the issued stock), resolved by its board of directors to copy and market plaintiffs' product. The first lot of the product was put on the market in April under the name "Facelettes" at a lower price than "Quettes." This action was instituted in June, 1952, against the corporation and the individuals both as such and under three different trade names under which they had done business.

Our jurisdiction rests upon diversity of citizenship, 28 U.S.C. § 1332, and accordingly we must draw the controlling principles of substantive law from the law of the forum, New York, Pecheur Lozenge Co. v. National Candy Co., 315 U.S. 666, 62 S.Ct. 853, 86 L.Ed. 1103; Erie R. Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487; Smith v. Dravo Corp., 7 Cir., 203 F.2d 369, 373, including New York's rules of the conflict of laws. Klaxon Co. v. Stentor Electric Mfg. Co., 313 U.S. 487, 61 S.Ct. 1020, 85 L.Ed. 1477; Smith v. Dravo Corp., supra, 7 Cir., 203 F.2d 369. Happily we need not attempt answer to the troublesome question whether a New York court would look to the law of New Jersey, where the confidential relationship arose, the law of Massachusetts, where the accused product was manufactured, or that of New York, where it was sold,¹ or would merely content itself in any event with its own law of remedies, for all three jurisdictions subscribe to the same general principle. Where defendants obtain secret information by means of a confidential relationship, they shall be held accountable for its use to their own advantage at the expense of the rightful possessor. See authorities collected below.

Defendants argue that the heart of plaintiffs' process was revealed by an expired patent, and that the improvements thereon were unpatentable applications of mechanical skill. This totally misconceives the nature of plaintiffs' right. Plaintiffs do not assert, indeed cannot assert, a property right in their development such as would entitle them to exclusive enjoyment against the world. Theirs is not a patent, but a trade secret. The essence of their action is not infringement, but breach of faith. It matters not that defendants could have gained their knowledge from a study of the expired patent and plaintiffs' publicly marketed product. The fact is that they did not. Instead they gained it from plaintiffs via their confidential relationship, and in so doing incurred a duty not to use it to plaintiffs' detriment. This duty they have breached. Junker v. Plummer, 320 Mass. 76, 67 N.E.2d 667, 165 A.L.R. 1449, citing 4 Restatement, Torts § 757 and comment a (1939); Peabody v. Norfolk, 98 Mass. 452; Vulcan Detinning Co. v. American Can Co., 72 N.J.Eq. 387, 67 A. 339, 12 L.R.A.,N.S., 102; Tabor v. Hoffman, 118 N.Y. 30, 23 N.E. 12, 16 Am.St.Rep. 740; Spiselman v. Rabinowitz, 270 App.Div. 548, 61 N. Y.S.2d 138, appeal denied 270 App.Div. 921, 62 N.Y.S.2d 608; Extrin Foods, Inc. v. Leighton, 202 Misc. 592, 115 N.Y. S.2d 429. See also Smith v. Dravo Corp., supra, 7 Cir., 203 F.2d 369; Schreyer v. Casco Products Corp., 2 Cir., 190 F.2d 921, certiorari denied 342 U.S. 913, 72 S.Ct. 360, 96 L.Ed. 683; 4 Restatement, Torts § 757 and comment a (1939); Nims, The Law of Unfair Competition and Trade-Marks §§ 141, 143a, 148 (4th Ed. 1947); Note, Protection and Use of Trade Secrets, 64 Harv.L.Rev. 976, 979, 982; cases collected in annotated note 170 A.L.R. 449, 488-490.

As was stated by Vann, J., in Tabor v. Hoffman, supra, 118 N.Y. 30, 36, 37, 23 N.E. 12, 13, 16 Am.St.Rep. 740:

"If a valuable medicine, not protected by patent, is put upon the market, any one may, if he can by chemical analysis and a series of experiments, or by any other use of the medicine itself, aided by his own resources only, discover the ingredients and their proportions. If he thus finds out the secret of the proprietor, he may use it to any extent that he desires without danger of interference by the courts. But, because this discovery may be possible by fair means, it would not justify a discovery by unfair means, such as the bribery of a clerk who, in course of his employment, had aided in compounding the medicine, and had thus become familiar with the formula. * * *

"The fact that one secret can be discovered more easily than another does not affect the principle. Even if resort to the patterns of the plaintiff was more of a convenience than a necessity, still, if there was a secret, it belonged to him, and the defendant had no right to obtain it by unfair means, or to use it after it was thus obtained. We think that the patterns were a secret device that was not disclosed by the publication of the pump, and that the plaintiff was entitled to the preventive remedies of the court."

To the same effect is the opinion of Garrison, J., speaking for the Court of Errors and Appeals of New Jersey in reversing a defendants' decree, in Vulcan Detinning Co. v. American Can Co., supra, 72 N.J.Eq. 387, 67 A. 339, 343, 12 L.R.A.,N.S., 102:

"Looking, now, a little more closely at the nature of the relief called for * * * we shall see, I think, that too much emphasis has perhaps been placed upon the element of absolute secrecy in the process, and that not enough stress has been laid upon the inequitable character of the defendants\' conduct in making a use of such process that was inimical to the complainant\'s interests. * * * It is proper to say here that the plea that absolution should be granted by courts of equity from the observance of such private obligations whenever the public will thereby be the gainer cannot for a moment be entertained. The language of Justice Brown, cited in the brief of counsel, namely, `It is as important to the public that competition should not be repressed by worthless patents as that the patentee of a really valuable invention should be protected in his monopoly,\' has, as I read the case of Pope Manufacturing Company v. Gormully, 144 U.S. 224, 12 S.Ct. 632, 36 L. Ed. 414, no such import in the context in which it stands in Mr. Justice Brown\'s opinion. The notion that the multiplication of worthless patents inflicts as great an injury upon the public as the multiplication of worthless citizens would do, can never, I fancy, be accepted by a court of equity as a sound proposition on which to base a doctrine absolving trustees from the observance of their trusts."

It is clear that these principles apply to the case at bar, and plaintiffs are entitled to relief.

The court below after making appropriate findings of fact granted an injunction and ordered an accounting by defendants of the profits received. D.C. S.D.N.Y., 115 F.Supp. 28. The authorities cited supra show that this relief, in both its branches, is appropriate and indeed compelled...