
    Benjamin F. Tabor, Resp’t, v. William M. Hoffman, App’lt.
    
    
      (Court of Appeals, Second Division,
    
    
      Filed December 10, 1889.)
    
    Injunction—To restrain use of patterns.
    
      An injunction will be granted to prevent the use of patterns surreptitiously copied from those in use by an inventor, although the perfected article is unpatented, where the different pieces out of which the article is made are not of the same size as the corresponding patterns, owing to shrinkage of metal in cooling, and the correct size can otherwise only be ascertained by a series of experiments involving expenditure of time and money.
    (Follett, Oh. J., dissenting.)
    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 perfecting 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 the 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 fiat 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.”
    
      Brundage & Chipman, for app’It; James P. Strong, for resp’t.
    
      
       Affirming 2 N. Y. State Rep., 191.
    
   Vann, J.

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., 174; Kiernan v. Manhattan Q. Tel. Co., 50 id., 194; Woolsey v. Judd, 4 Duer, 379; Peabody v. Norfolk, 98 Mass., 452; Salomon v. Hertz, 40 N. J. Eq., 400; Phillips on Patents, 333-341; Drone on Copyright, 97-139.

As the plaintiff had placed the perfected pump upon the market without 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, Clark & Co., 14 Fed. Rep., 728; Short’s Law of 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 appers 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 differ, ent 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 patterns were of the, same size as the corresponding portions of the pump, the castings made therefrom would neither fit together, nor, if fitted, work properly when pumping fluids varying in temperature. The size of the patterns cannot be discovered by merely using the different sections, of the pump, but various changes must be made, and those changes can only be ascertained by a series of experiments, involving the expenditure of both time and money. Are not the size and shape of the patterns, therefore, a secret which the plaintiff has not published, and in which he still has an exclusive property ? Can it be truthfully said that this secret can be learned from the pump, when experiments must be added to what can be learned from the pump before a pattern of the proper size can be made ? As more could be learned by measuring the patterns than could be learned by measuring the component parts of the pump, was there not a secret that belonged to the discoverer until he abandoned it by publication or it was fairly discovered by another ?

If a valuable medicine, not protected by patent, is put upon the market, any one may, if he can by chemical analysis and a series of experiments, or by any other use of the medicine itself aided by his own resources only, discover the ingredients and their proportions. If he thus finds out the secret of the proprietor, he may use it to any extent that he desires without danger of interference by the courts. But because this discovery may be possible by fair means, it would not justify a discovery by unfair means, such as the bribery of a clerk, who in the coarse of his employment had aided in compounding the medicine and had thus become familiar with the formula. The courts have frequently restrained persons who have learned a secret formula for compounding medicines, beverages and the like while in the employment of the proprietor from using it themselves or imparting it to others to his injury, thus, in effect, holding, as was said by the learned general term, “that the sale of the compounded article to the world was not a publication of the formula or device used in its manufacture.” Hammer v. Barnes, supra; Morison v. Moat, 21 Law J. Rep., N. S., 248; S. C., 20 id., 513; Green v. Folgham, 1 Sim. & Stu., 398; Yovatt v. Winyard, 1 Jac. & Walk., 394; Peabody v. Norfolk, supra; Salomon v. Hertz, supra ; Kerr on Injunctions, 181 ; High on Injunctions, § 663.

The fact that one secret can be discovered more easily than another does not affect the principle. Even if resort to the patterns of the plaintiff was more of a convenience than a necessity, still if there was a secret, it belonged to him, and the defendant had no right to obtain it by unfair means, or to use it after it was thus obtained. We think that the patterns were a secret device that was not disclosed by the publication of the pump, and that the plaintiff was entitled to the preventive remedies of the court. While the defendant could lawfully copy the pump because it had been published to the world, he could not lawfully copy the patterns, because they had not been published, but were still, in every sense, the property of the plaintiff, who owned not only the material substance, but also the discovery which they embodied.

The iudgment should be affirmed, with costs.

follett, Ch. J.

(dissenting)—An inventor of a new and useful improvement has a right to its exclusive enjoyment, which right he may protect by a patent or by concealment. The plaintiff’s patent had expired, and all of the parts of the pump represented by the patterns had been for a long time on sale in the form of a completed pump. The patent on the original invention having expired and the plaintiff having voluntarily made the subsequent improvements public by selling the improved article, he lost his right to their exclusive use. The plaintiff’s counsel concedes this; but says that while patterns could be made from the several parts of the pump, from which pumps like those made and sold by the plaintiff could be produced, that it was more difficult to make patterns from sections of the pump than from the patterns. This was so found by the court and cannot be gainsaid. The in-' vention was not the patterns but the idea represented by them, to which the plaintiff had lost his exclusive right. Neither the defendant nor the man who made the patterns sustained any relation by contract with the plaintiff. They were neither the servants nor partners of the plaintiff, and they owed him no duty not owed by the whole world. The act, at most, was a trespass, and the plaintiff made no case for equitable relief. It is neither asserted nor found that the defendant is unable to respond in damages. The cases cited to sustain the judgment arose out of the relation of master and servant or between partners, and in all of them the idea had not been disclosed to the public, but had been kept secret by the inventor. The judgment should be reversed and a new trial granted, with costs to abide the event.

Judgment affirmed, with costs.

All concur, except Eollett, Oh. J., dissenting, and Bradley and Haight, JJ., not sitting.  