It has been held, under secs. 888 and 894 of the New York Code of Civil Procedure, that a commission to take testimony on written interrogatorics will issue, although the interrogatories apparently call for the disclosure of a secret process; Defendorf, J., holding, that "the fact that the defendants say or show that the evidence sought from these witnesses is privileged should not prevent the granting of a commission." 57

Confidential information-Solicitation of former employer's customers.-The cases turn upon the character of the former employment. Where it was confidential the employe had no right to make or to use a list of customers.57a

"Running through the cases will be repeatedly found the statement that where an employe, after severing his connection with his former employer, makes use of trade secrets or confidential information, which he acquired during his employment in a competitive business, it results in what is called unfair competition and will be restrained. ''57b

It is quite immaterial whether there was an agreement not to enter into competition with the plaintiff,57c and equally immaterial whether there was a written list of customers. 57d

There is a doubt, however, as to whether such an injunction should ever be perpetual.57e

§ 110. Trademarks on products of secret processes.-In 1874, Sir George Jessel, then Master of the Rolls, announced the very fundamental. rule that a party would not be permitted to apply to an article of his own invention the name of an article made by a secret recipe.58 In a later English case Lord Herschell disposed of the defense made in a similar case, that the purchaser did not know the name of the manufacture of the original product by saying "one man may quite well pass off his goods as the goods of another if he

57-Cullinan v. Dwight, 100 N. Y. Supp. 896.

57a-Stevens & Co. v. Stiles, 29 R. I. 399, 71 Atl. Rep. 802, 20 L. R. A. (N. S.) 933, 17 Ann. Cas. 140; Robb v. Green, 2 Q. B. Div. (1895), 315; State ex rel. Davis & Co. v. Superior Court, 95 Wash. 258, 163 Pac. Rep. 765.

57b-John Davis & Co. v. Miller, 104 Wash. 444, 177 Pac. Rep. 323, 325.

57c-Stevens & Co. v. Stiles, supra. 57d-People's Coat, Apron & Towel Supply Co. v. Light, 171 App. Div. 671, 157 N. Y. Supp 15.

57e-Boosing v. Dorman, 210 N. Y. 529, 103 N. E. Rep. 1121; and see o. c. 148 App. 824, 133 N. Y. Supp. 910; John Davis & Co. v. Miller, 104 Wash. 444, 177 Pac. Rep. 323, 325.

58-Cotton v. Gillard, 44 L. J.

Ch. 90.

passes them off to people who will accept them as the manufacture of another, although they do not know that other by name at all.'' 59

The origination of a secret process by an employe, followed by the adoption by the employer of a trademark for the product of that process, leaves in the employe no personal right to the use of that trademark when he leaves the employment of its owner." 60 But circumstances may arise where an abandoned formula which has not lost its secret character, may be lawfully adopted with the trademark identifying its product.61

§ 111. Actions and defenses.-A controlling element in denying relief in cases of alleged trade secret may be the fact that the ideas communicated to the employe were not known to him to be secret; and the existence of the alleged secret may be negatived by evidence that visitors were freely admitted to the premises where the alleged trade secret was practiced.$2 Where the defendant denies all intention to make the use of a secret alleged to be threatened by the bill, the preliminary injunction may be denied without prejudice to the right to renew the application.63

At law, an action of tort in the nature of trespass on the case lies against a defendant for the betrayal of a trade secret, but if actual damage is not proven the recovery will be nominal.64

A bill is not multifarious which couples a change of misuse of trade secret with a charge of unfair competition.65

It is no defense to an action to enjoin the use of a trade secret by a former employe that the manufacture of goods by that process by the corporation plaintiff was ultra vires.66

59-Birmingham Vinegar Brewery Co. v. Powell, L. R. (1897) A. C. 710.

60-Jacoway v. Young, 228 Fed. Rep. 630. Compare the facts in Luckett v. Orange Julep Co., 271 Mo. 289, 196 S. W. Rep. 740.

61-W. A. Gaines & Co. v. Rock Spring Distilling Co., 226 Fed. Rep. 531, 536; 141 C. C. A. 287 (C. C. A. 6th Circuit).

62-Hamilton Mfg. Co. v. Tubbs Mfg. Co., 216 Fed. Rep. 401, 404.

63-Du Pont-De Nemours Pow der Co. v. Masland, 216 Fed. Rep. 271.

64-Roystone v. Woodbury Dermatological Institute, 122 N. Y. S. 444; 67 Misc. Rep. 265.

65-James B. Sipe Co. v. Columbia Refining Co., 171 Fed. Rep. 295.

66-S. S. White Dental Mfg. Co. v. Mitchell, 188 Fed. Rep. 1017.

Where a plaintiff sues for royalties for the use of the product of a secret process under contract, it is no defense that the defendant has, by independent experiment, discovered the process, theretofore only partially communicated to it by the plaintiff.7

Laches is not a defense to the prayer for an injunction against misuse of a trade secret. The plaintiff, even when laches is present, "should not be estopped from enjoining the use of its secret process in the future." 68

As to the decree, in cases of trade secrets, it has been held in some cases that is should specifiy definitely the information or secrets the defendant is to be restrained from using;69 in others, that it may be general in terms-"to insert the formula would destroy its secrecy.

99 70

Upon accounting the defendant ordered to account for profits is treated as a quasi trustee, the measure of recovery is his net profit, and he is to be credited with all the expenditures made in carrying on the business and for the benefit of the business, including repairs to plant and machinery, depreciation (no matter what causes it), insurance and taxes; but charged with interest on the net profits from the time they were realized.71

The decree. "There are two practical difficulties in the way of a satisfactory determination of cases of this general character. One is to guard against giving to the owner of a trade

67-Stuckes v. National Candy Co., 158 Mo. App. 342; 138 S. W. Rep. 352.

68-McPherson, J., in Philadelphia Extracting Co. v. Keystone Extracting Co., 176 Fed. Rep. 830. 69-Oxypathor Co. V. De Cordero, 149 N. Y. S. 513. For an illustrative decree, set out in the

opinion, see Macbeth-Evans Glass Co. v. Schnelbach, 239 Pa. 76; 86 Atl. Rep. 688.

70-Pomeroy Ink Co. v. Pomeroy, 77 N. J. Eq. 293; 78 Atl. Rep. 698. 71-Vulcan Detinning Co. V. American Can Co., 80 N. J. Eq. 443; 85 Atl. Rep. 318.

secret more than that to which he is entitled. He is not entitled to the aid of the law in preserving his secret from becoming known to the public. All he is entitled to is protection against a breach of contract or of confidence on the part of any one to whom he has confided the secret on trust. The other difficulty is to guard against the possibility that a plaintiff may make an unfair advertising use of a decree in his favor. Because of this the decree will be limited to the defendant and to such of its agents and employes to whom it may have made known the secret, and will warn the plaintiff against making any advertising use of the decree.” 71a

Joint tort-feasors-Estoppel of defendants.-Where the defendants sold a "secret" as such to a corporation and placed that fact upon the corporate records, it was held that whether or not it was a strict trade secret they were estopped to deny that it was.71b Although only one of the defendants had been in plaintiff's employ all of the defendant partners were liable, for his wrong was for the benefit of the firm."

71c

§ 112. The right of privacy.-Judge Cooley said, "the right of one's person may be said to be a right of complete immunity; to be let alone." 72 This "right to be let alone,' if extended to the unauthorized publication of the portrait of an individual, would constitute the right of privacy concerning which there has been considerable discussion of late years. To say whether that right will ever be generally recognized, would be merely a guess in the present state of the adjudications, and the guess would be much more hazard

71a-Dickinson, J., in Feasel v. Noxall Polish Mfg. Co., 268 Fed. Rep. 887, 892.

71b-Germo Mfg. Co. v. Combs (Mo. App.), 240 S. W. Rep. 872.

71c-Germo Mfg. Co. v. Combs, supra; Priddy v. Mackenzie, 205 Mo. 181, 194, 195, 103 S. W. Rep. 968. 72-Cooley on Torts, 139.

73

ous, if one were to say whether or not the right of privacy could ever be extended to the protection of anything more than the reproduction of the portrait of an individual. As yet, there are but few decisions upon the subject, although it has been considerably discussed in legal and other periodicals." The difficulty attendant upon the assertion of this right appears to reside principally in the apparent impossibility of extending the protection of equity to this "right to be let alone," to anything beyond the mere unauthorized reproduction of the likeness of an individual, without creating a species of lese majeste, and establishing a judicial censorship of all critical matter relating to an individual, which happens to displease him.

Thus, Judge Parker has stated, in his recent opinion denying the existence of the right of privacy, that "the so-called 'right of privacy' is, as the phrase suggests, founded upon the claim that a man has a right to pass through this world, if he wills, without having his picture published, his business enterprises discussed, his successful experiments written up for the benefit of others, or his eccentricities commented upon, either in hand-bills, circulars, catalogues, periodicals, or newspapers; and necessarily, that the things which may not be written and published of him must not be spoken of him by his neighbors, whether the comment be favorable or otherwise." This dictum calls attention to the reductio ad absurdum which would result if the "right to be let alone" were to be literally asserted. And at the threshold of the inquiry, it is obvious that this "right to be let alone" must be so limited as not to interfere with freedom of speech. The right of the individual to be protected against publication of false and defamatory matter is fully established, and adequately protected by the law. In going beyond the law of slander and libel, in recognition of the individual's right not to be even criticised, or commented upon, a task is being undertaken which is both delicate and difficult, if it is not, indeed impos

73-"The Right of Privacy," 4 Harv. Law Rev. 193. Other articles, 32 Cent. L. J. 69; 40 Cent. L. J. 53; 49 Cent. L. J. 379; 55 Cent. L. J. 123; 57 Cent. L. J. 361; 36

Am. Law Rev. 614; 12 Yale L. J. 35; 24 Nat. Corp. Rep. 709; 25 Nat. Corp. Rep. 183, 415.

74-Roberson v. Rochester Folding Box Co., 171 N. Y. 540.