Howard v. Howe

• Decision Date: 02 December 1932
• Docket Number: No. 4682.,4682.
• Citation: 61 F.2d 577
• Parties: HOWARD et al. v. HOWE.
• Court: U.S. Court of Appeals — Seventh Circuit

61 F.2d 577 (1932)

HOWARD et al. v. HOWE.

No. 4682.

Circuit Court of Appeals, Seventh Circuit.

September 23, 1932.

Rehearing Denied December 2, 1932.

Horace Kent Tenney, of Chicago, Ill., Delos G. Haynes, of St. Louis, Mo., Cornelius Lynde, of Chicago, Ill., and Daniel N. Kirby, of St. Louis, Mo., for appellants.

Bruce A. Campbell, of East St. Louis, Ill., and Joseph T. Davis and Lawrence C. Kingsland, both of St. Louis, Mo., for appellee.

Before ALSCHULER and SPARKS, Circuit Judges, and LINDLEY, District Judge.

LINDLEY, District Judge.

Appellee, plaintiff below, a former employee of Commonwealth Steel Company of Granite City, Ill., filed his bill of complaint against Clarence H. Howard and Harry M. Pflager, individually and against them jointly with Harrison Hoblitzelle as a committee for all stockholders of the Commonwealth Company, and certain other defendants, appellants herein. In his bill appellee averred that said Howard and certain other appellants, officers of the Commonwealth Company, and the company, had by reason of alleged misrepresentations, misstatements of fact, and false promises, coupled with the confidential relationship borne by said appellants toward appellee, placed themselves in the position of trustee for the latter's use and benefit with regard to the inventions hereinafter mentioned; that appellee, influenced by the confidential position aforesaid, had implicitly relied upon the pleaded wrongful conduct of appellants and thereby been induced to transfer to said company two certain patents, viz., one for "Method of and means for forming moulds for casting," No. 995,968, issued June 20, 1911, and one for a "Sand Mill," No. 1,218,403, issued March 6, 1917; that such assignments were wholly without consideration, preceded by no agreement to execute same and induced by the fraud aforesaid; and that as a result, appellants as trustees should account to him for the use of such inventions. The bill also prayed that the committee aforesaid be restrained from disposing of the money on hand, representing the undistributed balance of the total sale price of Commonwealth Company's assets to General Steel Casting Company, until an accounting should be had, and for general relief.

Appellants filed an amended answer, substantially altering their theories of defense set forth in their original answer. They contended that appellee was under agreement to make inventions such as disclosed by these patents; denied all allegations of fraud; averred that it was appellee's duty as a part of his employment to invent moulds, methods, and other improvements, which when so devised belonged to his employer; pleaded a general practice and custom, alleged to be known to appellee, for all employees to assign their inventions to the employer; averred that in pursuance thereof the employer paid bonuses and awarded prizes to its employees, including appellee; denied that appellee was entitled to any relief; and averred that he was barred from relief by laches, delay, and the statute of frauds.

The District Court found that the company, engaged in manufacturing large steel castings from 1904 to August 1, 1929, controlled and managed by Howard and Pflager (as were also its allied corporations, the patent holding companies), built up an inconsequential business into a prosperous one worth $35,000,000 and sold for that sum in 1929; that appellee was first employed by the company in 1904 as a pattern maker, and promoted thereafter successively to foreman, assistant superintendent and superintendent, remaining with the company until the sale, except for a period of some months when he was engaged in another business; that his employment was general in character, and not as an inventor; that there was no contract by him to assign any invention to the company or its nominee; that the patent first mentioned was of very important and valuable character, was the invention of appellee and contributed substantially to the success and prosperity of the employer; that Howard and his associates, by constantly cultivating and enunciating a doctrine of paternalism, co-operation, Golden Rule and good fellowship, built up a morale inspiring reliance upon them by the employees; that prizes and bonuses offered had no contractual character; that the actions of the corporate officers were such as to create a confidential relationship as contended by appellee; that appellee was the inventor also of the second patent; that Howard, occupying the confidential relationship aforesaid, procured assignments of appellee's rights to both said inventions by fraudulent misrepresentations and false promises of such character as to create a constructive trust upon the part of the corporation, its allies and officers, for the use and benefit of appellee; that the defenses pleaded are not sustained by the proof; that appellants are entitled to shop rights in the patents; and that the appellee is entitled to an accounting. These findings are in great detail, but sufficient part thereof for determination of this appeal has been indicated.

A careful examination of a voluminous record leaves us in substantial accord with the findings of fact of the trial court as expressed in its formal findings and memorandum opinion. The oral evidence being sharply controverted in various respects, it follows that we are governed by the rule that where the trial court sees and hears the witnesses, the determination of the credibility thereof is peculiarly the function of that court unless it clearly appears from the record that such determination is erroneous. In the absence of serious mistake, apparent upon the face of the record, the findings of the trial court must be accepted by us. Adamson v. Gilliland, 242 U. S. 350, 37 S. Ct. 169, 61 L. Ed. 356; Blettner v. Gill (C. C. A.) 251 F. 81; Magnetic Mfg. Co. v. Dings, etc., Co. (C. C. A.) 16 F.(2d) 739; Boyle v. Rousso, 16 F.(2d) 666 (C. C. A. 8). This rule applies with peculiar aptness to the keenly controverted question as to the relationship between appellee and his employer. Thus in Magnetic Mfg. Co. v. Dings, etc., Co. (C. C. A.) 16 F. (2d) 739, 741, we said: "We are not justified in disturbing the findings of the District Judge, who saw and heard the witnesses, and who tried the entire case with the single purpose in mind of ascertaining the exact contract relation existing between Bethke and his employer."

From the findings, it appears that appellee was under no contractual obligation to use his time in making inventions for his employer or to assign such inventions as he might conceive to the former. Appellee was regarded, prior to his inventions, at least, as only a faithful employee in the performance of his general duties in the capacities hereinbefore mentioned. In such a situation according to the Supreme Court in Dalzell et al. v. Dueber Watch-Case Mfg. Co., 149 U. S. 315, 13 S. Ct. 886, 888, 37 L. Ed. 749, the law is as follows: "But a manufacturing corporation which has employed a skilled workman, for a stated compensation, to take charge of its works, and to devote his time and services to devising and making improvements in articles there manufactured, is not entitled to a conveyance of patents obtained for inventions made by him while so employed, in the absence of express agreement to that effect." To the same effect is the earlier case of Hapgood v. Hewitt, 119 U. S. 226, 7 S. Ct. 193, 30 L. Ed. 369.

Inasmuch as the fact is that appellee was not employed to devise or perfect a mechanism or a means for accomplishing a prescribed result, and there was no express or implied agreement that any inventions he should make should belong to his employer, the case of Standard Parts Co. v. Peck, 264 U. S. 52, 44 S. Ct. 239, 241, 68 L. Ed. 560, 32 A. L. R. 1033, is beside the point here involved. There the court's decision was based upon the existence of a contract upon the part of the employee "to devote his time to the development of a process and machinery." For this he was to receive a stated compensation. Even though it be admitted in the present case that an express contract to make inventions for the employer is not necessary, it is surely requisite that there be something in the duties of the employee that would indicate that his compensation was for labor in making the invention and that both employer and employee so understood, before it can be said that the fruits of the latter's creative labors belong to the employer. We do not believe that a finding of such situation is...