Tabor v. Hoffman

• Decision Date: 10 December 1889
• Citation: 23 N.E. 12,118 N.Y. 30
• Parties: TABOR v. HOFFMAN.
• Court: New York Court of Appeals Court of Appeals

118 N.Y. 30

23 N.E. 12

TABOR

v.HOFFMAN.¹

Court of Appeals of New York, Second Division.

Dec. 10, 1889.

Appeal from a judgment of the general term of the supreme court in the fifth judicial department, affirming a judgment in favor of the plaintiff entered upon the decision of a special term.

The object of this action was to restrain the defendant from using certain patterns alleged to have been surreptitiously copied from patterns belonging to the plaintiff that had not been made public. The trial court found that the plaintiff, having invented a pump known as ‘Tabor's Rotary Pump,’ made a complete set of patterns to manufacture the same; that he necessarily spent much time, labor, and money in making and perfection such patterns, which were always in his exclusive possession; that from time to time he made improvements upon the pump, and incorporated the same in the patterns, which were never thrown on the market nor given to the public; that one Francis Walz surreptitiously made for the defendant a duplicate set of said patterns from measurements taken from the patterns of the plaintiff, without his knowledge or consent, while they were in possession of said Walz to be repaired; that before the commencement of this action the defendant, with knowledge of all these facts and without the consent of the plaintiff, had commenced to make, and since then has made, pumps from said patterns, thus obtained; that the plaintiff has established a large and profitable trade in said pumps, which ‘will be injured, and and plaintiff damaged, if the defendant is permitted’ to continue to manufacture from said patterns. The trial court further found, upon the request of the defendant, ‘that a competent pattern-maker can make a set of patterns from measurements taken from the pump itself, without the aid of plaintiff's patterns,’ but refused to find, upon the like request, that this could be done ‘with little more expense and trouble than from measurements taken from plaintiff's said patterns.’ It appeared from the evidence that the finished pump ‘does not comply with the patterns,’ because it is made of brass and iron, which expand unequally in the finished casting, and also contract unequally when cooling during the process of casting; that some of the patterns are subdivided into sections, which greatly facilitates measurements and drawings, as each section can be laid flat upon the wood or paper; and that it would take longer to make a set of patterns from the pump than it would to copy the perfected patterns themselves. The special term, by its final decree, restrained the defendant ‘from manufacturing any more pumps from the set of patterns made by Francis Walz from measurements taken from the plaintiff's patterns, * * * and from selling, disposing of, or using in any manner said patterns.’

FOLLETT, C. J., dissenting.

Brundage & Chipman, for appellant.

James P. Strong, for respondent.

VANN, J., ( after stating the facts as above.)

It is conceded by the appellant that, independent of copyright or letters patent, an inventor or author has, by the common law, an exclusive property in his invention or composition, until by publication it becomes the property of the general public. This concession seems to be well founded, and to be sustained by authority. Palmer v. De Witt, 47 N. Y. 532; Potter v. McPherson, 21 Hun, 559; Hammer v. Barnes, 26 How. Pr. 174;Kiernan v. Telegraph Co., 50 How. Pr. 194;Woolsey v. Judd, 4 Duer, 379;Peabody v. Norfolk, 98 Mass. 452;Salomon v. Hertz, 40 N. J. Eq. 400, 2 Atl. Rep. 379; Phil. Pat. 333-341; Drone, Copyr. 97-139. As the plaintiff had placed the perfected pump upon the market, with out obtaining the protection of the patent laws, he thereby published that invention to the world, and no longer had any exclusive property therein. Id.; Rees v. Peltzer, 75 Ill. 475; Clemens v. Belford, 14 Fed. Rep. 728; Shortt, Literature, 48. But the completed pump was not his only invention, for he had also discovered means, or machines in the form of patterns, which greatly aided, if they were not indispensable, in the manufacture of the pumps. This discovery he had not intentionally published, but had kept it secret, unless, by disclosing the invention of the pump, he had also disclosed the invention of the patterns by which the pump was made. The precise question, therefore, presented by this appeal, as it appears to us, is whether there is a secret in the patterns that yet remains a secret, although the pump has been given to the world. The pump consists of many different pieces, the most of which are made by running melted brass or iron in a mould. The mould is formed by the use of patterns, which exceed in number the separate parts of the pump, as some of them are divided into several sections. The different pieces out of which the pump is made are not of the same size as the corresponding patterns, owing to the shrinkage of the metal in cooling. In constructing patterns it is necessary to make allowances, not only for the shrinkage, which is greater in brass than in iron, but also for the expansion of the completed casting under different conditions of heat and cold, so that the different parts of the pump will properly fit together and adapt themselves, by nicely balanced expansion and contraction, to pumping either hot or cold liquids. If the paterns were of the same size as the corresponding portions of the pump, the castings...