Warwick v. De Mayo

• Citation: 213 S.W.2d 392,358 Mo. 130
• Decision Date: 13 September 1948
• Docket Number: 40708
• Parties: Earl C. Warwick, Appellant, v. Frank DeMayo, Jr., Vendo Sales Company, a Corporation; C. Earl Hovey, Trustee, Elmer F. Pierson, John T. Pierson, Edward M. Neville and G.R. Starnes, Respondents
• Court: Missouri Supreme Court

213 S.W.2d 392

358 Mo. 130

Earl C. Warwick, Appellant, v. Frank DeMayo, Jr., Vendo Sales Company, a Corporation; C. Earl Hovey, Trustee, Elmer F. Pierson, John T. Pierson, Edward M. Neville and G.R. Starnes, Respondents

No. 40708

Supreme Court of Missouri

September 13, 1948

Appeal from Jackson Circuit Court; Hon. John R. James Judge.

Affirmed.

Burns & Burns, Ira B. Burns and Robert S. Burns for appellant.

(1) The court erred in sustaining defendants' motion to dismiss on the ground that the petition alleges the invention was made by the plaintiff in 1936 and reduced to actual practice and then fails to allege an application for a patent by the plaintiff within two years from the date of the alleged invention under U.S.C.A., Title 35, Section 31, providing a limitation of two years in which to file said application. (2) The court erred in sustaining the motion to dismiss on the ground that it appears on the face of the petition that the alleged invention had been in public use for a period of more than two years within which time the plaintiff at no time made claim for a patent or right to a patent thereon. U.S.C.A., Title 35, Sec. 31; Bohlman v. American Paper Goods Co., 53 F.Supp. 794; Harrington v. Natl Outdoor Adv. Co., 355 Mo. 524, 196 S.W.2d 786; National Aluminate Corp. v. Permutit Co., 145 F.2d 175; Wietzel v. Lacy, 39 F.2d 672; Mengel v. Leach, 226 S.W. 883; Sparks v. Gus Brecht Butcher's Supply Co., 225 S.W. 1022; Allen-Qualley Co. v. Shellmar Products Co., 31 F.2d 293; Shellmar Products Co. v. Allen-Qualley Co., 87 F.2d 104; Germo Mfg. Co. v. Combs, 209 Mo.App. 651, 240 S.W. 872; Pratt v. Paris Gaslight & Coke Co., 168 U.S. 255, 18 S.Ct. 62; Irving Iron Works v. Kerlow Steel Flooring Co., 96 N.J.Eq. 702, 126 A. 291; Freedman v. Washburn Co., 145 F.2d 715; Hoeltke v. C.M. Kemp Mfg. Co., 80 F.2d 912; Wireless Specialty Apparatus Co. v. Mica Condenser Co., Limited, 239 Mass. 158, 131 N.E. 307. (3) The statute of limitations does not run in favor of a trustee against his beneficiary, until a repudiation of the trust has been made and the beneficiary is fully informed thereof. Bender v. Zimmerman, 80 Mo.App. 138; Wood on Limitations; Perry on Trusts; Elliott v. Landis Mach. Co., 236 Mo. 546, 139 S.W. 356; Case v. Goodman, 250 Mo. 112, 156 S.W. 698; Case v. Sipes, 280 Mo. 110, 217 S.W. 306; Canada v. Daniel, 157 S.W. 1032 Southern Bank of Fulton v. Nichols, 235 Mo. 401, 138 S.W. 881; Lewis v. Lewis, 225 S.W. 974; Chouteau v. Allen, 70 Mo. 290; 3 Scott on Trusts, sec 327.2, l.c. 1782; Rollestone v. Bank, 299 Mo. 57, 252 S.W. 394. (4) The plaintiff is not barred from this action under Section 1014 of the Revised Statutes of Missouri, 1939. Sec. 1014, R.S. 1939; Osler v. Joplin Life Ins. Co., 164 S.W.2d 295; Foster v. Petree, 347 Mo. 992, 149 S.W.2d 851. (5) The court erred in sustaining the motion to dismiss on the ground that plaintiff is estopped from maintaining this action for equitable relief as prayed for, upon the ground that it appears upon the face of the petition that plaintiff is guilty of laches, neglect and total lack of diligence and hence not entitled to equitable relief because of his long delay and long failure to institute his alleged cause of action with promptness and within a reasonable time under all the facts and circumstances alleged in the petition. Pike v. Martindale, 91 Mo. 268, 1 S.W. 858; Davies v. Keiser, 297 Mo. 1, 246 S.W. 897; Fenner v. Moore, 202 S.W. 544; Rollestone v. Natl. Bank of Commerce of St. Louis, 299 Mo. 57, 252 S.W. 394; Wendell v. Ozark Orchard Co., 200 S.W. 747; Newman v. Newman, 152 Mo. 398, 54 S.W. 19; Chouteau v. Allen, 70 Mo. 290; Marshall v. Hill, 246 Mo. 1, 151 S.W. 131; Summers v. Abernathy, 234 Mo. 156, 136 S.W. 289.

R. Carter Tucker, John Murphy, William H. Wilson and J. Gordon Siddens for respondents The Vendo Company, C. Earl Hovey, Trustee, Elmer F. Pierson, John T. Pierson and Edward M. Neville; Robert W. Wagstaff and Tucker, Murphy & Wilson of counsel.

(1) Under the federal laws plaintiff has no claim against these defendants nor any rights in the alleged invention. Plaintiff has lost his right to obtain a patent on his alleged invention. Secs. 31, 48, 52, U.S.C.A.; Wade v. Metcalf, 129 U.S. 202, 9 S.Ct. 271; Crook v. Bendix Aviation, 68 F.Supp. 449. (2) Plaintiff's petition shows abandonment of his invention to public use. 48 C.J., p. 102, sec. 108. (3) Defendants claim plaintiff is a stranger to the patent in question and to them, nevertheless, plaintiff by his alleged agreement with DeMayo has assigned his rights, if any, to DeMayo and, hence, DeMayo's assignment to defendants conveyed all rights to manufacture, use and sell the device. American Type Founders v. Dexter Folding, 53 F.Supp. 602; Chicago Pneumatic Tool Co. v. Zeigler, 51 F.Supp. 199; Paulus v. M.M. Buck Mfg. Co., 129 F. 594; Heywood-Wakefield Co. v. Small, 96 F.2d 496; Title 35, Sec. 47, U.S.C.A.; Whitcomb v. Whitcomb, 81 A. 97; Blakeney v. Goode, 30 Ohio St. 350; Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 288 F. 330, affirmed 266 U.S. 342, 45 S.Ct. 117; 48 C.J. pp. 244, 246, 247, secs. 375, 377, 381; Rude v. Westcott, 130 U.S. 152, 9 S.Ct. 463; Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334; McDuffee v. Hestonville M. & F. Pass. Ry. Co., 162 F. 36; Davis v. Wynne, 190 S.W. 510; American Dirigold Corp. v. Dirigold Metals Corp., 125 F.2d 446. (4) Plaintiff had no trade secret or common law rights as an inventor. 4 Restatement of Law of Torts, p. 5; Lueddecke v. Chevrolet Motor Co., 70 F.2d 345; Title 35, Sec. 48, U.S.C.A. (5) Plaintiff's claim is barred by statute of limitations. Sec. 1014, R.S. 1939. (6) Plaintiff's fraud theory. Brown v. Irving-Pitt Mfg. Co., 316 Mo. 1023, 292 S.W. 1023; Siler v. Kessinger, 149 S.W.2d 890; Ludwig v. Scott, 65 S.W.2d 1034; Walker v. Ozark Cooperage & Lumber Co., 218 S.W. 694. (7) Plaintiff's trust theory. Kerber v. Rowe, 348 Mo. 1125, 156 S.W.2d 925; Landis v. Saxton, 105 Mo. 486, 16 S.W. 912; Sanford v. Van Pelt, 314 Mo. 175, 282 S.W. 1022; Johnson v. United Railways Co., 243 Mo. 278, 147 S.W. 1077; Kissane v. Brewer, 208 Mo.App. 244, 232 S.W. 1106; Meyer v. Wise, 133 S.W.2d 321; Hudson v. Cahoon, 193 Mo. 547, 91 S.W. 72; State ex rel. Lee et al. v. Sartorius, 344 Mo. 912, 130 S.W.2d 547; 65 C.J. 231, sec. 21; 54 Am. Jur., pp. 33, 34, sec. 15; 65 C.J., pp. 454, 455, 456, 457, sec. 215. (8) Plaintiff's claim is barred by laches. 30 C.J.S. 520, sec. 112; Ruckels v. Pryor, 351 Mo. 819, 174 S.W.2d 185; Snow v. Funck, 41 S.W.2d 2; Townsend v. Maplewood Inv. & Loan Co., 351 Mo. 738, 173 S.W.2d 911; Deicke v. Roudebush, 138 S.W.2d 678. (9) Plaintiff's petition fails to allege facts sufficient to constitute a claim for relief in equity. Strong v. Crancer, 335 Mo. 1209, 76 S.W.2d 383; Wilson v. Hoover, 342 Mo. 1182, 119 S.W.2d 768; Coleman v. Kansas City, Mo., 351 Mo. 254, 173 S.W.2d 572; Trieseler v. Helmbacher, 350 Mo. 807, 168 S.W.2d 1030; Palmer v. Marshall, 24 S.W.2d 229; American Button Co. v. Weishaar, 170 S.W.2d 147; State ex rel. Cockrum v. Southern, 229 Mo.App. 749, 83 S.W.2d 162.

OPINION

Douglas, P.J.

Plaintiff claims he is entitled to recover more than $ 50,000 from defendants because by fraud they wrongfully acquired and have used his invention which he had disclosed in confidence to one of the defendants, DeMayo. He seeks to stop them from continuing to manufacture and sell the device which he invented, and to make them account to him for their profits. The trial court sustained defendants' motions to dismiss, and plaintiff has appealed.

One of the grounds for dismissing the petition was that it showed on its face that the statute of limitations barred plaintiff's action. This was because plaintiff failed to file his action within five years after he discovered defendants' fraud.

Plaintiff argues that the statute of limitations cannot bar this action because his disclosure of his invention to defendant DeMayo was under an express trust. The other defendants thereafter acquired his invention with notice of the express trust and through collusion with the trustee DeMayo, so they became trustees ex maleficio. Therefore, since plaintiff is the beneficiary of an express trust the statute does not run against him, and in favor of the trustee of the express trust and the trustees ex maleficio.

However we find plaintiff manifested no intention to create a trust in disclosing his invention to DeMayo so there could be no express trust. The relationship between plaintiff and DeMayo arising from the agreement between them was analogous to that of joint adventurers engaged upon a common undertaking for joint profit. Under these circumstances the statute of limitations has barred this action.

Plaintiff states in his petition he invented in the early part of 1936 a coin operated vending machine for the self-service sale of bottled soft drinks. After inserting a coin in a slot, a person could obtain a bottle containing a soft drink from a cooling cabinet. Defendant DeMayo was connected with a cabinet company which made and sold cooling cabinets. Plaintiff set out to interest DeMayo, and through DeMayo the cabinet company with which he was connected, in the manufacture and sale or other disposition of a vending machine embodying his invention.

Plaintiff disclosed his invention to DeMayo in confidence under an oral contract for the purpose of having DeMayo use it in manufacturing vending machines. They also orally agreed since DeMayo had already advanced money to finance the manufacture and marketing of the invention, and would continue to do so that he should be first reimbursed from the proceeds of the sales for the monies so advanced. After he had been reimbursed the net proceeds were to be shared equally between him and plaintiff. By the oral...