Harrington v. National Outdoor Advertising Co.

• Decision Date: 09 September 1946
• Docket Number: 39405
• Citation: Harrington v. National Outdoor Advertising Co., 355 Mo. 524, 196 S.W.2d 786 (Mo. 1946)
• Parties: John W. Harrington, Appellant, v. National Outdoor Advertising Company, a Corporation, Frank D. Jackson, and General Motors Corporation, a Corporation
• Court: Missouri Supreme Court

196 S.W.2d 786

355 Mo. 524

John W. Harrington, Appellant, v. National Outdoor Advertising Company, a Corporation, Frank D. Jackson, and General Motors Corporation, a Corporation

No. 39405

Supreme Court of Missouri

September 9, 1946

Motion for Rehearing or to Transfer to Banc Overruled October 14 1946.

Appeal from Jackson Circuit Court; Hon. Thomas J. Seehorn Judge.

Affirmed.

Melvin A. Rogers, Glenn A. Thomas, Calvin & Kimbrell and Walter W. Calvin for appellant.

(1)The plaintiff's testimony tended to establish, if, indeed, it did not affirmatively do so, that the unpatented invention in question here, was his trade-secret; and, if so, he had a property right therein which the law will protect against those who, after acquiring knowledge thereof, wrongfully and unlawfully convert, purloin, disclose or exploit the same.Chicago Board of Trade v. Christie Grain & Stock Co.,198 U.S. 236, 49 L.Ed. 1031;Becher v. Contoure Laboratories, Inc.,29 F.2d 31;Allen-Qualley Co. v Shellmar Products Co.,31 F.2d 293;Victor Chemical Works v. Iliff,299 Ill. 532, 132 N.E. 806;Progress Laundry Co. v. Hamilton,208 Ky. 348, 270 S.W. 834;Glucol Mfg. Co. v. Shulist,239 Mich. 70, 214 N.W. 152;Cameron Machine Co. v. Samuel M. Langston Co.,115 A. 212.(2) It was affirmatively and unequivocally established by the testimony; and, also, solemnly admitted upon the trial of this cause that the defendant, Frank D. Jackson, was not the first and original inventor of the trade-secret or invention in question here; but, that he, nevertheless, by his false application and oath procured letters patent thereon; and, therefore, the court erred in refusing to give instruction No. 10, as tendered and requested by the plaintiff.35 U.S.C.A., sec. 35;Kennedy v. Hazelton,128 U.S. 667, 32 L.Ed. 576;United States Gypsum Co. v. Bestwall Mfg. Co.,15 F.2d 704;Standard Oil Development Co. v. James B. Berry Sons Co., Inc.,92 F.2d 386;International Carbonic Engineering Co. v. Natural Carbonic Products, Inc.,57 F.Supp. 248.(3)The plaintiff, having reduced his trade-secret or invention to practice, was not required to exercise reasonable diligence to protect the same by applying for a patent thereon; and, therefore, the court erred in giving, over the plaintiff's objection and exception, Instruction E, at the instance and request of the defendants.35 U.S.C.A., sec. 31;Bennett v. Fitzgerald,48 F.2d 917;Altorfer v. Haag,74 F.2d 132;Kean v. Wheelan,102 F.2d 824;Leichsenring v. Freeman,103 F.2d 378;Hainsworth v. Phillip,129 F.2d 350;Boucher Inventions, Ltd., v. Sola Electric Co.,131 F.2d 225, 318 U.S. 770, 87 L.Ed. 1140;Jones v. Winsor,133 F.2d 931;Pennington Engineering Co. v. Houde Engineering Corp.,43 F.Supp. 698, affirmed in136 F.2d 210;certiorari denied320 U.S. 771, 88 L.Ed. 461;Minnesota Mining Co. v. Van Cleef,139 F.2d 550;Marconi Wireless Telegraph Co. of America v. United States,320 U.S. 1, 87 L.Ed. 1731.(4)The trial court also committed prejudicial error, as against the plaintiff herein, in allowing and permitting the defendants, over the plaintiff's objection and exception, to proffer to the plaintiff, in open court and in the presence of the jury, the patent which the defendant, Frank D. Jackson, obtained upon his trade-secret or invention; to offer to assign the same to him; to auction off, or sell, the same for any price to anyone who would be willing to buy it, and to absolutely offer the same to the plaintiff as a gift.

John T. Harding, David A. Murphy, R. Carter Tucker and John Murphy for respondentGeneral Motors Corporation; Leo B. Parker for respondentFrank D. Jackson; Alfred D. Hillman for respondentNational Outdoor Advertising Company.

(1)Appellant had no trade secret.Lueddecke v. Chevrolet Motor Co.,70 F.2d 345;4 Restatement of the Law of Torts, p. 5;Bristol v. Eq. Life Assur. Soc.,132 N.Y. 264, 30 N.E. 506;Stein v. Morris,120 Va. 390;Haskins v. Ryan,71 N.J.Eq. 575, 64 A. 436;Masline v. New York, N.H. & H.R. Co.,95 Conn. 702, 112 A. 639;Soule v. Bon Ami Co.,195 N.Y.S. 574.(2) A conspiracy is an agreement or understanding between two or more persons to do an unlawful act or to use unlawful means to do an act which is lawful.Seegers v. Marx & Haas Clo. Co.,66 S.W.2d 526.(3) The burden of proof was upon the appellant to prove his allegations of conspiracy and fraud by clear and convincing evidence.Jones v. Nichols,280 Mo. 653, 216 S.W. 962;Brueckle v. Pechan,21 S.W.2d 903.(4) While conspiracy and fraud may be established by circumstantial evidence, yet it cannot be deduced from mere suspicion nor is it proved by insinuation and innnuendo, and it is not given body and form by mere presumption.Brueckle v. Pechan,21 S.W.2d 903;Lampton Realty Co. v. Hoyt,80 S.W.2d 249;Wolfersberger v. Miller,39 S.W.2d 758, 764.(5) There is no evidence in this case that this respondent or anybody else entered into a wrongful conspiracy.(6) The owner of a trade secret or secret process has no right except against those who have contracted expressly or by implication not to disclose the secret or who have obtained the disclosure by unfair means.Unless the disclosure of a trade secret is protected by a contract, express or implied, or made under circumstances which create a confidential relationship between the owner and the person or persons to whom the disclosure was made, the owner loses all property rights therein, and his trade secret becomes the property of the world.Tower Mfg. Co. v. Monsanto Chemical Works,20 F.2d 386;Godefroy Mfg. Co. v. Lady Lennox Co.,134 S.W.2d 140;De Filippis v. Chrysler Corp.,53 F.Supp. 977;Carver v. Harr,27 A.2d 895;Lueddecke v. Chevrolet Motor Co.,70 F.2d 345;American Dirigold Corp. v. Dirigold Metals Corp.,125 F.2d 446;Germo Mfg. Co. v. Combs,240 S.W. 872.(7)W. H. L. Watts, W. I. Potter, James V. Harrington, Joe D. Witte, assignees of the appellant, had a legal right without appellant joining therein to authorize said Alfred D. Hillman to make the best deal possible on the Chevrolet signs by that company to Chevrolet dealers.Gayler v. Wilder,10 How. 477;Hendrie v. Sayles,98 U.S. 546;Davis v. Wynne,190 S.W. 510;Waterman v. Mackenzie,138 U.S. 252;Blackledge v. Weir & Craig Mfg. Co.,108 F. 71;Lalance v. Natl. Enameling Co.,108 F. 77;Paulus v. Buck Mfg. Co.,129 F. 594;McDuffee v. Hestonville M. & F. Ry. Co.,162 F. 36;Gibbs v. Emerson Electric Co.,29 F.Supp. 810;L.L. Black Paper Co. v. Hydroiloid,32 F.Supp. 857;American Type Foundries v. Dexter Folder Co.,53 F.Supp. 602;American Dirigold Corp. v. Dirigold Metals Co.,125 F.2d 446.(8)Appellant's denial of his signature on Exhibit I, and his denials of his signatures on Exhibit K and Exhibit XX, as well as his denials of his signature to other assignments executed by him, are so obviously false that the court should disregard them and rule the case as if he had admitted his signature to said assignments to be genuine.Mahl v. Terrell,111 S.W.2d 160;State ex rel. K. C. Southern v. Shain,105 S.W.2d 915;Dempsey v. Horton,84 S.W.2d 621;Schupback v. Meshevsky,300 S.W. 465;Bennette v. Hader,87 S.W.2d 413;Meffert v. Lawson,233 S.W. 31;Waldman v. Skrainka Construction Co.,233 S.W. 242;Vette v. Hackman,237 S.W. 802;Shaw v. American Ins. Co.,33 S.W.2d 1052;Hanne v. Watters,47 S.W.2d 182;Rohmann v. City of Richmond Heights,135 S.W.2d 378;Fleming v. Anderson,232 S.W. 718.(9)The court's refusal to give appellant's Instruction 10 was not error.L.A. Young Spring & Wire Corp. v. Fall,11 N.W.2d 329;Sec. 52,Title 35, U.S.C.A., p. 131;Sec. 31,Title 35, U.S.C.A., p. 17;Nolop v. Smith,36 F.2d 838;Rava v. Charlton,104 F.2d 798;Chamberlain v. Kleist,112 F.2d 846.(10)The court did not err in giving Instruction E. Sec. 31,Title 35, U.S.C.A., p. 17;Sec. 52,Title 35, U.S.C.A., p. 131;Mendenhall v. Neyer,149 S.W.2d 366;Oliver v. Morgan,73 S.W.2d 993;Williams v. Hyman-Michaels Co.,277 S.W. 593;Gricus v. United Rys. Co. of St. Louis,237 S.W. 763.(11)The trial court did not commit prejudicial error in permitting the respondents, National Outdoor Advertising Company and Frank D. Jackson, to offer to the appellant in open court the patent which the respondent, Frank D. Jackson, obtained on appellant's alleged trade secret or invention and did not commit prejudicial error in permitting said respondents, National Outdoor Advertising Company and Frank D. Jackson, to offer to assign said patent to appellant or to sell the same for any price to anyone who would be willing to buy it or to offer said patent to appellant as a gift.

Van Osdol, C. Bradley and Dalton, CC., concur.

OPINION

VAN OSDOL

Action for $ 300,000 actual and $ 900,000 punitive damages for alleged conspiracy of defendants and others to wrongfully procure the disclosure of and to wrongfully appropriate plaintiff's trade secret or invention.The jury returned a verdict for defendants, and plaintiff has appealed from the ensuing judgment.

It was alleged by plaintiff that defendants, conspiring, induced the disclosure of plaintiff's invention by means of a contract executed March 18, 1936, whereby defendantNational Outdoor Advertising Company(in bad faith) undertook to sell a large number of the units of plaintiff's invention to defendantGeneral Motors Corporation(hereinafter referred to as General Motors).It was further alleged that, after the execution of the contract, defendants, pretending plaintiff's invention had been anticipated by others demanded the reduction of the royalties stipulated in the contract and, upon plaintiff's refusal to agree to the reduction, cancelled the contract, appropriated plaintiff's invention, and procured the issuance of letters patent in the name of defendantFrank D. Jackson. ...