PUTNAM
Circuit Judge.
This
bill was brought in the Circuit Court by the Vocalion Organ
Company, a corporation organized under the laws of the state
of New Jersey, against Morris S. Wright, a citizen of the
state of Massachusetts. The decree was for the complainant
and the respondent below appealed to us. It is somewhat
difficult to make a concise statement of the facts; and
therefore, for that purpose
we adopt that given in various extracts from the opinion of
the learned judge of the Circuit Court as follows:
'This
suit in equity is brought to compel the defendant to assign
to the complainant to one-half interest in certain
improvements, inventions, and patents in or relative to
organs, in accordance with the terms of a written contract
made by the parties on May 15, 1901. The suit is brought
also to restrain the defendant, his heirs, executors
administrators, or assigns, from selling or assigning any
interest in said inventions, improvements, and patents to
any person other than the complainant during the life of
the contract.
'At
the time of entering into the contract the complainant was
engaged in the business of manufacturing and selling
musical instruments, including organs, both keyed and
automatic. The defendant was the superintendent of the
complainant corporation at a salary of $3,600 per year.
'Although
only the second and fourth paragraphs of the contract are
brought before the court for construction, it is material
for certain purposes of the inquiry to examine the whole
contract. The contract is as follows:
''Agreement
made this fifteenth day of May, in the year nineteen
hundred and one, between the Vocalion Organ Company, a
corporation organized and existing under the laws of the
state of New Jersey, transacting business at Worcester, in
the county of Worcester, commonwealth of Massachusetts, and
in the city of New York, state of New York, party of the
first part, and Morris S. Wright of Worcester, aforesaid,
party of the second part, witnesseth:
"That
for and in consideration of the mutual covenants and
other consideration hereinafter expressed the parties
hereto covenant and agree as follows:
"First.
The party of the first part covenants and agrees to
employ the party of the second part and does hereby
employ the party of the second part, and the party of
the second part covenants and agrees to accept and
hereby does accept exclusive employment of the party of
the first part as superintendent of factories of the
party of the first part.
"Second.
The party of the second part covenants and agrees that
an undivided one-half part of the whole right, title
and interest in and to all inventions or improvements
made by him during the term of this agreement, in or
relative to organs, both keyed and automatic, shall be
the property of the first part, and, immediately upon
making any such inventions or improvements, the party
of the second part covenants to apply for letters
patent of the United States therefor, and for such
foreign patents therefor as the party of the first part
may desire, and to make, execute and deliver all such
applications, specifications, drawings and other
documents as may be necessary to obtain such letters
patent; and the party of the second part further
covenants to execute, acknowledge and deliver to the
party of the first part a proper assignment for record
of an undivided one-half interest in each such
invention and in the letters patent when issued-- all,
however, at the proper cost and expense of the party of
the first part or its successors and assigns. The party
of the second part further covenants not to sell or
assign his undivided one-half part in and to any of the
above-mentioned inventions, improvements and letters
patent, which part shall be and remain the exclusive
property of the party of the second part, his heirs,
executors and administrators, until the expiration of
the term of this agreement.
"Third.
The party of the second part further covenants and agrees
that he will without further consideration than is herein
expressed assign and transfer to the party of the first
part letters patent of the United States number 509,506 for
improvements in reed and pipe organs and will upon request
of the party of the first part execute and deliver to the
party of the first part a proper assignment of said patent
for record.
"Fourth.
The party of the second part further covenants and agrees
to grant and does hereby grant unto the party of the first
part the exclusive right to purchase and use inventions or
improvements made by him during the term of this agreement,
in self-playing pianos or self-playing devices for playing
pianos, upon such terms as to price or royalty and other
conditions as may be mutually agreed upon; and the party of
the second part further covenants that he will not sell,
assign, transfer or in any way dispose of any
such invention or improvement to any other corporation or
persons than the party of the first part during the term of
this agreement.
"Seventh.
It is further covenanted and agreed that this agreement shall
be deemed to be in full force and effect from and after the
first day of July nineteen hundred, and until the first day
of July, nineteen hundred and five, and shall terminate on
said first day of July, nineteen hundred and five.
"In
witness whereof,'' etc.
'The
testimony tends to show that, previous to making the
contract, Mr. Tremaine, the president of the complainant
company, had many conversations with the defendant in regard
to his experience and ability in manufacturing, improving,
and inventing musical instruments; that the defendant gave
the assurance that he could develop and improve the different
instruments manufactured by the complainant company; that, in
view of these representations made by the defendant, the
complainant company was induced to make the agreement now in
suit, providing for the increase of the defendant's
salary from $3,600 per year to $5,000 per year, with an added
percentage based on the value of the output; and that the
arrangement under the contract was to continue from July 1,
1900, to July 1, 1905.
'The
testimony tends to show that the defendant made improvements
and inventions during the term of the agreement, and applied
for and obtained letters patent. The complainant requested
the defendant to assign to it an undivided one-half interest
in these improvements and letters patent, alleging that they
were improvements or inventions in or relative to organs both
keyed and automatic. The defendant refused to do this.
'The
evidence tends to show that the defendant made certain
inventions in the musical are, for which application for
letters patent was made and allowed. The testimony also tends
to show that all these alleged improvements and inventions
were applicable equally as well to organs as to
piano-players. The complainant contends that all these
improvements and inventions come under the terms of the
second paragraph of the agreement, because they are
improvements and inventions 'in or relative to organs
both keyed and automatic.' And the complainant insists
that these...
