VOL. XLII.

SEPTEMBER.

NOS. 17 AND 18.

PATENT AND COPYRIGHT LAW, CONSIDERED WITH REFERENCE TO THE CONTRACT OF

EMPLOYMENT.

A. INVENTIONS OF EMPLOYÉS.

1. Rights of employers, and employés considered without reference to

2.

the patent laws.

considered with reference to the patent laws. Generally.

3. Engagement

of employé for the purpose of making improvements in specific articles.

4. Engagement of employé for the purpose of perfecting an original

conception of the employer.

5. Employment of workman for the express purpose of making inventions

for the employer's benefit.

6. Refusal of employé to disclose the results of discoveries made by him, when deemed to be a breach of duty.

B. LITERARY WORK OF EMPLOYÉS.

7. When an employer is entitled to the results of literary or artistic work performed by the employé. Generally.

8. Rights of parties in regard to books.

9.

10.

11.

12.

13.

14.

dramatic pieces.

musical compositions.

abstracts from official records.

encyclopaedias and periodicals.

notes to new editions of books previously copyrighted by the employer.

literary work done in connection with official duties.

A. INVENTIONS OF EMPLOYÉS.

reference

1. Rights of employers, and employés considered without to the patent laws. Abstracting the element of the effect of the patent laws, the respective rights of an employer and employé

with reference to the discoveries of the latter are determined by the application of principles similar to those which govern the general question of the extent of an employer's interest in things acquired or produced by the exercise of the mental or bodily powers of an employé;-that is to say, an employer is entitled to the benefit of all the discoveries of his employé, which have a direct and immediate connection with the work which the latter was engaged to perform, and were made during that part of the day, which he was bound to devote to the discharge of his contractual duties1. The right of the employer in this regard is especially clear, where it is shown not only that the discovery in question was made during the working hours of the employé, but that the employer's materials and machinery were being used under the employer's direction for the avowed purpose of making such a discovery.

1 That a calico printer was entitled, after having discharged his head colourman, to the book in which that servant had entered the processes for mixing colours during his service, although many of the processes were the invention of the servant himself, was held in Makepeace v. Jackson (1813) 4 Taunt. 770. This was an action of trover to recover possession of the book. But the following passage from the judgment of Chambre, J., seems to justify a citation of the case as an authority for the general principle formulated in the text. "The master has a right to something beside the mere manual labour of the servant in the mixing of the colours; and though the plaintiff invents them, yet they are to be used for his master's benefit, and he cannot carry on his trade without his book."

It has been held that secret processess and compounds invented by an employé of a firm in pursuance of an employment for that purpose became the property of the firm without an express assignment; and he may be compelled to account for profits derived from manufacture and sale thereof on his own account. Baldwin v. Von Micheroux (Sup. Ct. 1893) 5 Misc. 386, 25 N.Y. Supp. 857.

2 In a case involving the obligation of an employé to disclose a secret process discovered by him under such circumstances, (see § 16, post), the court remarked: "Independently of any special contract to that effect, the resulting discovery was just as much the employing company's property, as if, instead of being the formula of a secret process, it had been a material product; so that the defendant in refusing disclosure was refusing to give up to the corporation what belonged to it." Silver Spring & Co. v. Woolworth (1890) 16 R. I. 729.

The effect of Dempsey v. Dobson (1896) 174 Pa. 122, 40 L.R.A. 550, 34 Atl. 459, is thus correctly stated in the reporter's headnote: If one employed by another experiments at the expense of his employer and for his use with a view to the immediate use of the results of such experiments in his employer's business, the recipes and formulae resulting from such experiments belong to the employer so far as to give him the right to use the same. In that case it was the duty of a colour mixer employed in a carpet factory to prepare the dyes or colours so as to reproduce in the car

A custom which would give to an employé working under such conditions an exclusive title, as against his employer, to the results of his experiments. is unreasonable, and cannot be sustained 3.

2.

considered with reference to the patent laws. Generally.(a) Employé entitled to inventions independently made by him. In a recent English case it was conceded to be a well settled principle, that "the mere existence of a contract of service does not, per se, disqualify a servant from taking out a patent for an invention made by him during the term of service, even though the invention may relate to subject matter germane to, and useful for his employers in their business, and even though the servant may have made use of his employer's time. and servant's and materials in bringing his invention to completion, and may have allowed his employer to use the invention

pet all the shades indicated by the design. After his work was approved by the designer, it was his duty to enter in a book called a "Colour Book" the number of the carpet and the formula by which each shade of colour used in its manufacture was produced. He was also required to keep a book in which a piece of yarn coloured according to the formula for each shade in the carpet, was preserved with the number of the carpet to which the shades belonged. When the colours were prepared they were put into large pitchers, each labelled with the formula or recipe it contained. Held, (1) that the recipes prepared by the colour mixer for the use of his employers in the manufacture of their carpets belonged to them so far at least as to give them the right to continue the use of the various colours and shades produced by them; (2) that the mixer had a right if he chose so to do to preserve the recipes for his use in the future, but his right was not an exclusive one as against his employers; (3) that if the colour mixer did not keep the books which it was his duty to keep, but kept private books of his own in which he recorded the recipes, his employers had a right to a copy of their own recipes when he retired from their employment; (4) that in an action by the mixer to recover damages for the detention of his books, the value of the recipes in the books should not be considered in estimating his damages; (5) that the plaintiff's measure of damages was merely the detention of the books without regard to the recipes, and also proper compensation for any unnecessary violence in the manner of the detention of the books, or disregard for the sensibilities or the self respect of the plaintiff; (6) that in the instruction as to damages the jury should be told to consider the conduct of the plaintiff, his disregard of his duty in making no entries in his employers' colour books, his failure to disclose this fact to them, and his leaving them under the honest belief that he was removing from their mill their own colour books.

3 In Dempsey v. Dobson (see last note), evidence of such a custom with regard to the various combinations and shades of colour devised by him was held to have been properly rejected.

while in their employment". The same doctrine is recognized by the American Courts. So far as regards its application,

1 Byrne J. in Worthington Pumping Engine Co. v. Moore (1902) 19 Times L.R. 84.

The rule that if a servant, while in the employ of his master, makes an invention, that invention belongs to the servant, and not to the master, was recognized by Abbott, C.J., in the nisi prius case of Bloxam v. Elsee (1824) 1 C. & P. 558; R. & M. 187.

"If an employer takes out a patent for an invention discovered and worked out by a workman in his employ, and the patentee has no more connection with the invention than that he is the employer of the workman, the patent will be void on the ground that the workman and not the patentee is the true and first inventor." Frost, Patents, (2nd Ed.) p. 14, citing R. v. Arkwright (1785) Dav. Pat. Cas. 61; Barker v. Shaw (1831) 1 Webst. Pat. Cas. 126, note.

The same author (p. 15) cites several rulings of the Patent Office as having established the principle, that, in the absence of special contract, the invention of a servant, even though made in the employer's time, and at the expense of the employer, does not become the property of the employer, so as to justify him in opposing the grant of a patent for the invention to the servant who is the proper patentee. Frost, Patents, (2nd Ed.) p. 15.

In a case where the evidence indicated that a manufacturer and his foreman were the joint inventors of the improvement in question, and the master sought letters-patent the granting of which was opposed by the foreman, Lord Cranworth was of opinion that they ought only to be granted on the terms of their being vested in trustees for the benefit both of the master and of the foreman. Re Russell's Patent (1857) 2 De G. & J. 130, per Lord Cranworth.

2 "Persons employed as much as employers are entitled to their own independent inventions." Agawam v. Jordan (1868) 7 Wall. 583 (603); repeated in Collar Co. v. Van Dusen (1874) 23 Wall. 530.

"If the employé makes an invention wholly independent of the employer, it is the law, that the invention belongs to him who actually makes it and that it does not inure to the benefit of the employer." Muller v. Kelley (1901) 18 App. D.C. 163.

"The mere fact, that the appellant was in the employment of appellee and received wages, and even used the material of appellee in the manufacture of his models, and even received assistance in making models, from the latter's employees, would not give it the property in the invention to the exclusion of the former." Dice v. Joliet Mfg. Co. (1882) 11 Ill. App. 109 (p. 114), Aff'd 105 Ill. 649.

A mechanic hired for the purpose of perfecting certain machinery, and bound to devote his skill and labour to the interest of those for whom the machinery is being worked, is not, by that fact, under any obligation to abstain from applying for a patent in his own name for such machinery, if otherwise entitled thereto. Green v. Willard Barrel Co., (1876) 1 Mo. App. 202.

A man in the employ of the Fire Department of New York invented a heating apparatus, and attached it himself, to two of the engines, many other engines being also provided with it. The effect of the U. S. Gen. Stat. § 4899, under the circumstances was held to be, that the City had no right to the use of the invention, except in respect to those machines to which it had been applied before the employé had taken out a patent for it. Brickill v. Mayor of New York (1880) 7 Fed. 479.

there is no difference between the rights of persons working for the Government and for other employers 3.

It has been laid down that any patentable device, which suggests itself with respect to an article, during the progress of experiments made by the employer with a view to its improvement, will be presumed to have been conceived by the employer, and that it is incumbent on the employee to overcome this presumption by satisfactory proof. But it is difficult to admit that a simple presumption can ever furnish an adequate basis for an adjustment of the rights between two persons. A commissioner of patents would not issue a patent to any one who was unable to show by positive and specific evidence, that he was the inventor, or the assignee of the inventor, and there seems to be no valid reason why a court should, in a controversy between a master and his servant, proceed upon a different principle.

(b) Employé subjected to duress.-On general principles it is manifest that an employer cannot as against his employé, retain the benefit of letters patent which the latter has been prevented from applying for by coercive conduct of his superior, which amounts to actual duress. But duress will not be inferred from the mere fact that the employé feared he would lose his employment if he asserted his rights".

(c) Patent taken out by employé in violation of his fiduciary obligations.-Two English decisions proceed upon the prineiple that an employé may be declared a trustee for his employer, in respect to any patent, which he could not, under the circumstances, take out in his own name without violating his

3 "The government has no more power to appropriate a man's property invested in a patent than it has to take his property invested in real estate; nor does the mere fact that an inventor is at the time of his invention in the employ of the government transfer to it any title to, or interest in it. An employé, performing all the duties assigned to him in his department of service, may exercise his inventive faculties in any direction he chooses, with the assurance that whatever invention he may thus conceive and perfect is his individual property." Solomons v. United States (1890) 137 U.S. 342.

4 Miller v. Kelley (1901) 18 App. D.C. 163.

5 Barr Car Co. v. Chicago & N.W. Ry. Co., (1901) 110 Fed. 972, 49 C.C.A. 194, 97 O.G. 2534.