Connelly Manuf'r Co. v. Wattles

• Decision Date: 01 December 1891
• Citation: 23 A. 123,49 N.J.E. 92
• Parties: CONNELLY MANUF'R CO. v. WATTLES.
• Court: New Jersey Court of Chancery

23 A. 123

49 N.J.E. 92

CONNELLY MANUF'R CO.

v. WATTLES.

Court of Chancery of New Jersey.

Dec. 1, 1891.

(Syllabus by the Court.)

Application of the Connelly Manufacturing Company for an injunction to restrain Cyra B. Wattles from selling certain patents. Heard on bill and affidavits on the part of the complainant and affidavits on the part of the defendant. Writ denied.

A. Q. Kensbey, for complainant.

Foster M. Voorhees, for defendant.

VAN FLEET, V. C. The question presented for decision in this case is whether or not the complainant is entitled to an injunction restraining the defendant from making sale or any other disposition of two letters patent granted to him by the government of the United States. The complainant claims that the patents in question are its property in equity, and that, although they were issued to the defendant, still, in point of equity, he simply holds their legal title in trust for it, and that, therefore, he should be enjoined from making any use of them, for his own benefit, until this suit shall have been finally decided. It is not denied or disputed that the patents were issued for inventions which the defendant had made or discovered, but the complainant says that the patents are its property, because when the inventions were made which the patents cover, as well as when the letters patent were issued, the defendant was in its employ under a contract by which he had bound himself to devote his whole time and skill to its service, and to exercise his inventive faculties, for its benefit, in improving and perfecting a gas motor for street-car propulsion, belonging to it, and to give it all the results thereof. It is thus seen that the contract upon which the complainant rests its right to relief is a contract for the special service of making inventions for the purpose of improving and perfecting a machine belonging to the complainant. There can be no doubt that such a contract is clearly within the contracting capacity of any two persons possessing the requisite capacity to make other valid agreements. A man may sell the conceptions and productions of his mind. He has the same right to agree to work for another with his brains that he has to agree to labor for him with his hands. In employments where skill or art is required, the most valuable service which, as a general rule, the employe renders to his employer is by the exercise of his mental faculties. The doctrine is settled that, where one person agrees to invent for another, or to exercise his inventive ability for the benefit of another, the inventions made and patents procured during the time of service covered by the contract belong in equity to the employer, and not to the employe. The adjudications on this subject are uniform so far as 1 have examined them. Wilkens v. Spafford, 3 Ban. & A. 274; Burr v. De La Vergne, 102 N. Y. 415,7 N. E. Rep. 366; Annin v. Wren, 44 Hun, 352; Binney v. Annan, 107 Mass. 94; Hapgood v. Hewitt, 119 U. S. 226, 233, 7 Sup. Ct. Rep. 193. The decisive question of the case, then, at this time, is, does it satisfactorily appear, on full consideration of all the facts now before the court, that, at the time the inventions were made, which are covered by the patents in question, such a contract as that alleged existed between the complainant and defendant? The circumstances which led the complainant to make the contract are described in the bill as follows: Prior to the time when the contract was made the complainant had been engaged in trying to construct a gas motor for the propulsion of street-cars. It had so far completed its motor that it had been used, for about eight months, on a street railway in the city of Elizabeth. Such use had demonstrated that the principles applied were correct, but that certain changes in the adaptation of the parts, and some improvements in mechanical details, were necessary in order to make the motor a complete success. To make the changes and improvements required, the managers of the complainant believed it was necessary that the services of some person with good mechanical skill and experience should be engaged. The defendant was recommended as a fit person to perform such service, and shortly thereafter, the complainant says, the contract in question was made. In negotiating the contract, Mr. Thomas E. Connelly, vice-president of the complainant, acted for the complainant. He is the only person who has made an affidavit, on the part of the complainant, definingtheterms of the contract, or describing what was said and done during the negotiations. He says, in his affidavit, in stating the terms of the contract, that "no written agreement was drawn, but it was distinctly understood that he [the defendant] was to give us the benefit of his whole time, skill, knowledge, and ability in improving and perfecting our motor; and it was our distinct understanding that, as the consideration for giving him a larger salary than he demanded, we should secure, with respect to our motor, all the fruits of his skill and inventive ability as applied to it under our supervision; that the sole work in which he was to be engaged was the perfection of our motor, in the development of improvements therein, and the elimination of the faults discovered in former...