American Stay Co. v. Delaney

• Decision Date: 29 February 1912
• Citation: 211 Mass. 229,97 N.E. 911
• Parties: AMERICAN STAY CO. v. DELANEY.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

211 Mass. 229

97 N.E. 911

AMERICAN STAY CO. v. DELANEY.

Supreme Judicial Court of Massachusetts, Suffolk.

February 29, 1912

COUNSEL

Powers & Hall, for appellant.

Dennis Sullivan and Alfred B. White, for appellee.

OPINION

BRALEY J.

The motion to recommit having been addressed to the judicial discretion of the trial court, and no exceptions having been taken, the plaintiff's appeal from the interlocutory decrees denying the motion, and confirming the master's report present no questions for our decision. Bakshian v Hassanoff, 186 Mass. 255, 71 N.E. 555; Crosier v Kellogg, 210 Mass. 181, 96 N.E. 76; Lipsky v Heller, 199 Mass. 310, 85 N.E. 453.

The bill, however, having been dismissed, its appeal from the final decree brings up for determination the question whether upon his findings equitable relief should be granted. During the period covered by the controversy the plaintiff was engaged in the manufacture and sale of shoe and leather trimmings, which among other products included leather welting. It is alleged, and the master reports, that by means of special machinery, secret processes and formulas largely invented, devised and discovered by its president, who is a successful inventor of much experience, the company has been enabled to make with great economy as to cost of production, and to put upon the market, a leather welting of such superior quality, that it has gained a wide reputation, and an extensive and profitable trade has been fostered and established. The machines with one exception have not been patented, and if the process becomes generally known other manufacturers probably will adopt it, and this branch of the plaintiff's business may be greatly impaired in value, or wholly destroyed.

It is elementary that if the proprietor in connection with his business invents, or discovers, and keeps secret, processes of manufacture, which enable him to produce goods at a less cost, or of more meritorious quality than his competitors, his right to the invention or discovery is not exclusive as against the public, or persons whose knowledge of it has been lawfully obtained. It is a monopoly only while he retains control, and can prevent publication. Chadwick v. Covell, 151 Mass. 190, 191, 23 N.E. 1068, 6 L. R. A. 839, 21 Am. St. Rep. 442; Gayler v. Wilder, 10 How. 477, 493, 13 L.Ed. 504. But if in violation of his contract of employment, where although not expressly stipulated, he impliedly agreed not to divulge the plaintiff's arts and unpatented inventions, the defendant either individually, or jointly with others to whom they were improperly disclosed, undertook in the production of welt to use and apply them, a court of equity while enjoining the continuance of such interference, and further disclosure, will give relief by the assessment of damages for any injury already inflicted. Peabody v. Norfolk, 98 Mass. 452, 96 Am. Dec. 664; Coddington v. Bispham, 36 N. J. Eq. 574; A. & W. Thum Co. v. Tloczynski, 114 Mich. 149, 72 N.W. 140, 38 L. R. A. 200, 68 Am. St. Rep. 469; Pollard v. Photographic Co., 40 Ch. Div. 345, 354; Field v. Ashley, 79 Mich. 231, 44 N.W. 602; Williamson v. Torkingson, 2 Y. & C. Exch. 726; Lipping v. Clarke, 2 Hare, 393.

The defendant being of unusual ability developed great mechancial skill while in the plaintiff's service, and with the understanding that the plaintiff believing its undisclosed methods to have been very successful desired him not to impart any information of their existence, gave valuable aid to the president in the development of his inventions, which became the property of the company. He was not, however, employed to originate inventions for the plaintiff's benefit, and while he could not appropriate his employer's trade secrets in whatever form they may have consisted, no obligation rested upon him to forego the exercise of his inventive powers, even if they were incited because of knowledge necessarily derived from the performance of his contractual duties. It was legitimate for him under these conditions to invent and perfect improvements which were embodied in new machines of greater capacity and efficiency. Hopedale Machine Co. v. Entwistle, 133 Mass. 443; American Circular Loom Co. v. Wilson, 198 Mass. 185, 84 N.E. 133, 126 Am. St. Rep. 406; Dice v. Joliet Mfg. Co., 11 Ill.App. 109, 114; s. c., 105 Ill. 649; Westervelt v. National Paper & Supply Co., 154 Ind. 673, 57 N.E. 552; Agawam Woolen Co. v. Jordan, 7 Wall. 583, 19 L.Ed. 177; Solomons v. United States, 137 U.S. 342, 11 S.Ct. 88, 34 L.Ed. 667; Gill v. United States, 160 U.S. 426, 16 S.Ct. 322, 40 L.Ed. 480.

The plaintiff's inability to support any...