Course No. 9200-704 (& 804)-801
ID No. 85737 & 85736
Time: W 6:30 - 9:30 p.m.
Room Across from 231D (IP Alcove)
|Copyright © 2000, 2002, 2003, 2006, 2008, 2010 Jay Dratler, Jr. For permission, see CMI.|
Heyman v. Winarick, Inc.325 F.2d 584, 140 U.S.P.Q. (BNA) 403 (2d Cir. 1963)
Before Waterman, Hays and Marshall, Circuit Judges. [*585]
In this case plaintiff seeks damages, an injunction, and an accounting of profits. He claims an alleged wrongful appropriation of trade secrets obtained in the course of a confidential relationship and joins as defendants Ar. Winarick, Inc., Jules Winarick, the defendant corporation's president, and Hugo Bell, its sales manager. Plaintiff alleges that during negotiations with defendants over the possible purchase by defendant corporation of a business owned by plaintiff, he revealed to defendants confidential information about the business which defendants ultimately used for [*586] their own benefit. The case was tried below by a court without a jury.(1) After a full trial of the issues the United States District Court for the Southern District of New York, Cooper, J., dismissed the complaint. . . . We affirm.
In 1956, plaintiff organized in California a business called Pleasure Products Company, devoted to the manufacture and marketing of a non-patented liquid fingernail hardener called ‘It's a Pleasure.' The product, designed to strengthen fingernails through daily immersion in a prepared solution of the product with water, was sold at drugstores, beauty shops, and cosmetic counters throughout the country. The business resulted from plaintiff's accidental discovery, in 1955, that a chemical compound he was then testing at home for detergent properties had the remarkable effect of hardening fingernails. Unfortunately the compound, so discovered, which plaintiff referred to below as a ‘quaternary' or ‘surface active agent,' was toxic. Consequently plaintiff devoted much time in succeeding months to the testing of various chemical compounds in an attempt to find a non-toxic substitute. At last he discovered a satisfactory substitute and combined it with water and coloring to form his product. Apparently marketing efforts proved successful and plaintiff's business began to grow.
In September of 1957, plaintiff placed an advertisement in the West Coast edition of the Wall Street Journal offering his business for sale at $ 80,000. A broker for defendant Ar. Winarick, Inc., a large cosmetics firm with a multi-million dollar annual volume of business, contacted plaintiff and indicated that his client might be interested in purchasing.
Plaintiff thereafter met with the defendant corporation's representatives on three separate occasions in Los Angeles. On October 18 and November 7 or 8 plaintiff met with the corporation's sales manager, Hugo Bell, one of the individual defendants in the case, and on November 8 or 9 he met with Bell and the other individual defendant, Jules Winarick, the corporation's president. The testimony below was in sharp conflict as to just what information plaintiff divulged during the meetings. Plaintiff claimed that he disclosed to defendants certain trade secrets, both the formula for his product and important information as to the marketing of it. On November 13 defendants sent plaintiff a telegram indicating that they were no longer interested in purchasing his business and five months later defendant AR. Winarick, Inc. began marketing its own liquid fingernail hardener under the name of ‘Dura-Gloss Finger-Nail Hardener,' the purchase price of which was approximately one third that of plaintiff's. Plaintiff then commenced this suit.
In a case such as this the plaintiff must show that a confidential relationship existed between plaintiff and defendant, that disclosures of what amounted to trade secrets were made by plaintiff to defendant, and that defendant made use of those disclosures. . . . Restatement, Torts, § 757 (1938).
Mindful of Justice Holmes's statement that the determination of the existence of a confidential relationship is the ‘starting point' in a case like this, E.I. Du Pont de Nemours Powder Co. v. Masland, 244 U.S. 100, 102, 37 S.Ct. 575, 61 L.Ed. 1016 (1917), we begin by examining the relationship which developed between the parties in the case at bar. While there is no indication that plaintiff extracted from defendants a promise of trust with respect to information disclosed during their negotiations, an express agreement is not a prerequisite to the establishment of a confidential relationship. [*587] A relationship of trust and confidence may naturally result from the circumstances surrounding the dealings between the parties.
Where, as here, the parties are a seller and a prospective purchaser, certain disclosures will usually be made about the thing which is for sale so that the purchaser may rationally assess the merits of concluding the bargain. If the information disclosed is of such a nature as to otherwise qualify as a trade secret, we think the prospective buyer is bound to receive the information in confidence. . . . Smith v. Dravo Corp., 203 F.2d 369 (7 Cir. 1953); Schreyer v. Casco Prods. Corp., 190 F.2d 921 (2 Cir. 1951), cert. denied, 342 U.S. 913 (1952) . . . . As the prospective buyer is given the information for the limited purpose of aiding him in deciding whether to buy, he is bound to receive the information for use within the ambit of this limitation. He may not in good conscience accept the information; terminate negotiations for the sale; and then, using vital data secured from the would-be seller, set out on a venture of his own. Whatever conduct courts should countenance when parties bargain at arm's length, we think parties should be expected to comply with these essentials of fair dealing.
he view that a confidential relationship arises when a seller and buyer negotiate for a sale is not new to this Circuit. In Schreyer v. Casco Prods. Corp., supra, the plaintiffs, developers of an electric steam iron, had entered into negotiations looking toward the manufacture and sale of their product by the defendant under a license. During negotiations plaintiffs turned over to defendant blue prints and other detailed information, and revealed the ‘know-how' of the product's manufacture. Apart from the seller-buyer relationship which called for the finding that a confidential relationship had been established, no special facts were said to exist. Nevertheless, the court found that although there was no express agreement to hold the information in confidence and not to use it if the negotiations for a license were not successful, there was a confidential relationship created between the parties by the disclosures which restricted the right of Casco to use them to the purposes for which the disclosures were made. The breach of this confidential relationship, enabling Casco to invade the plaintiffs' market, was unfair competition. More recently, in Speedry Chemical Prods., Inc. v. Carter's Ink Co., [306 F.2d 328, 331 (2 Cir. 1962) this court, citing the Schreyer case, also found a confidential relationship where the parties bargained at arm's length with respect to a licensing agreement. . . . Therefore, we conclude that the parties here, in their negotiations looking toward defendant's purchase of plaintiff's business, entered into a confidential relationship with respect to disclosures which plaintiff may have made about that business.(2) [*588]
The next problem, that of determining whether plaintiff actually disclosed to defendants trade secret information, raises questions of both fact and law. There is the initial question, purely factual, of what information was revealed to defendants; and there is also the question whether whatever information that was divulged should be entitled to protection under the law of trade secrets.
At the trial, a sharp conflict in testimony developed relative to what plaintiff disclosed to defendants during negotiations. The testimony was particularly conflicting with respect to whether plaintiff had revealed the ingredients of his product. Plaintiff testified that during his first meeting with defendant Bell he explained to Bell the details of the discovery of his product, and had revealed that the active ingredient in his fingernail hardener was a ‘quaternary' or a ‘non-toxic surface agent.'(3) Plaintiff also testified that in his final meeting with both Bell and Winarick he had reiterated this, and had spelled out the product's composition in more detail.(4) Defendants, on the other hand, both testified that plaintiff had not revealed the ingredients of his product,(5) though Bell [*589] did admit on cross-examination that he could not definitely remember whether plaintiff had recounted his story of how the product had been discovered. Moreover, defendants put on the stand one Kaye, a chemist, who testified that during a period of several months subsequent to the California conferences he had worked for defendant corporation on the laboratory development of a liquid fingernail hardener. He testified that he had received from defendants no information whatsoever as to the ingredients such a product should contain.(6) Thus, the determination of the issue depended largely upon an evaluation of the credibility of the witnesses who testified.
Our court is not disposed to overturn conclusions of the trier of facts which are based upon substantial evidence and upon a determination of the credibility of witnesses who have given conflicting versions of the facts. Moreover, where a trial has been had by a judge without a jury, the judge's findings must stand unless "clearly erroneous." Fed.R.Civ.P. 52(a) . . . . "A finding is ‘clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948).
Here, the district judge made the following findings of fact with respect to the disclosure of formula information:
After having carefully examined the record in this case, and paying due
regard to the trial court's opportunity to observe and consider the demeanor
of the witnesses, we are of the opinion that the above findings were based
upon substantial evidence, and that no clear error was committed. To
the extent that Finding No. 15 involves a conclusion of law that plaintiff's
reference to a "quaternary" did not amount to the divulging of a trade
secret, we are in agreement with the trial court. Of course, if
plaintiff had disclosed the actual formula for his product, or if he had
informed defendants with more particularity of its ingredients, there
would have been a disclosure of a trade secret. . . . But it is
our view that plaintiff's casual reference to a "quaternary" was so vague
and indefinite as not to be entitled to protection under the law of trade
secrets. At any rate, plaintiff's evidence failed to establish that
whatever knowledge may have been communicated to defendants by the mention
of a "quaternary" defendants were thereby aided in any way in the development
of a liquid fingernail hardener of their own.
The fact that defendants could have secured the names of likely customers
for a fingernail hardener through alternative methods should not preclude
denominating the information which was disclosed as a trade secret. While
the names of potential customers may have been obtainable from a simple
examination of a classified directory, information as to the retailers
who were actually purchasing plaintiff's product could not have been so
secured. Moreover, the data concerning the amount of the product
each customer purchased, compiled on a monthly basis, was certainly not
obtainable in this way. Finally, as we have had occasion to note
before, resolution of the issue in a case like this depends not upon how
a defendant could have acquired the information, but rather upon how he
did in fact actually acquire it. "It matters not that defendants
could have gained [*591] their knowledge from a study of the expired
patent and plaintiffs' publicly marketed product. The fact is that
they did not. Instead they gained it from plaintiffs via their confidential
relationship, and in so doing incurred a duty not to use it to plaintiffs'
detriment." Franke v. Wiltschek, 209 F.2d 493, 495 (2 Cir.
1953). Accord: Tabor v. Hoffman, 118 N.Y. 30, 37, 23 N.E. 12 (1889)
. . . . Thus, plaintiff established that his disclosure to defendants
of trade secret information in the form of customer data was disclosed
to them in the course of a confidential relationship.
1. [court's footnote 1] Plaintiff is a citizen
of California. Defendant Bell is a citizen of Connecticut. Defendant
Winarick is a citizen of New York. Defendant Ar. Winarick, Inc.
is a corporation organized under the laws of New York. Jurisdiction
is therefore based on diversity of citizenship. 28 U.S.C. § 1332.
2. [court's footnote 2] The court in Matarese
v. Moore-McCormack Lines, [158 F.2d 631,170 A.L.R. 440 (2 Cir. 1946),]
while finding for the plaintiff, noted that, "Courts have justly been
assiduous in defeating attempts to delve into the pockets of business
firms through spurious claims for compensation for the use of ideas."
The situations where the court felt such caution needed to be exercised
were made clear by the further statement that, "Thus to be rejected are
attempts made by telephoning or writing vague ideas to business corporations
and then seizing upon some later general similarity between their products
and the notions propounded as a basis for damages." Recovery was
permitted in the Matarese case where plaintiff, a stevedore who
had worked on defendant company's pier, had disclosed an idea for facilitating
the loading and unloading of cargo in the course of negotiations with
defendant's agent and the idea was later appropriated by defendant company.
6. [court's footnote 6] It appears from the
record that much of Kaye's laboratory work was chemical analysis of plaintiff's
product in an attempt to discover its formula. Plaintiff on this
appeal has made much of this, evidently in the belief that such conduct
was somehow actionable. It is clear, however, that defendants were
free to attempt to discover plaintiff's formula by having his product
subjected to chemical analysis. Speedry Chemical Prods., Inc.
v. Carter's Ink Co., supra, 306 P.2d at 330; . . . Tabor
v. Hoffman, 118 N.Y. 30, 23 N.E. 12 (1889) . . . . As the court
said in Tabor v. Hoffman, supra, 118 N.Y. at 36, 23 N.E.
at 13: "If a valuable medicine, not protect by patent, is put upon the
market, anyone 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."