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43, 31 N. Y. Supp. 696. The power to restrain the violation of a secret thus protected by contract between the parties is well settled. That power, and the extent to which the secret will be protected, were examined and determined in this court in the case of Kodak Co. v. Reichenbach, 79 Hun, 188, 29 N. Y. Supp. 1143, where the cases were examined, and the conclusion was reached that when the value of the property rested in the secret processes, which were not patented, an employé who acquired a knowledge of the processes by virtue of his employment would be restrained from a disclosure of them, at the suit of his employer. While it appears in this case that the processes were owned by Delery, and the defendant did not acquire them during the time he was in the employ of the plaintiff, yet, as they belonged to Delery; as, between Delery and the defendant, they were secret processes, and the defendant, by his representations that they should remain secret as to the plaintiff, induced it to purchase the business,-the rules laid down in the case of Kodak Co. v. Reichenbach apply here with equal force. The same question was presented to the appellate division, in the Fourth department, in the case of Little v. Gallus, 4 App. Div. 569, 38 N. Y. Supp. 487, where it was held that the owner of a process for manufacturing an article, which was kept secret from all but confidential employés, might restrain them, after they had left its employ, from disclosing or using in a rival establishment their knowledge thereof, acquired while occupying such confidential relations. These two cases were, as we think, well decided; and they are ample authority for giving to the plaintiff the relief which he demanded, as to the processes which were known to Braendly at the time of the purchase of the business from Delery. With regard to the processes discovered by employés of the plaintiff, and disclosed to Braendly, while he was in their employ, to enable him to prosecute his work, the case is still stronger, and it is brought precisely within the rules laid down in the two cases above cited. As to all these secret processes, then, upon the case made by the plaintiff, it was clearly entitled to a judgment restraining the defendant from violating his contract by their disclosure, and it was error to refuse such a judgment to it.

We have not considered whether the plaintiff is entitled to an injunction restraining the defendant from entering into the employ of this competitor corporation. This judgment must be reversed without regard to that question. The question of the validity of that portion of the contract, and whether, upon the whole, the plaintiff is entitled to a specific performance of it if it is valid, is one which need not be decided until the defendant's version of the case shall have been made to appear; and then, upon the whole case as presented to it, the court will be in a situation to decide whether that portion of the contract should be enforced, or how far its enforcement is necessary to the complete protection of the business which this defendant induced the plaintiff to invest its money in.

The judgment should be reversed, and a new trial ordered; costs to appellant to abide event.

VAN BRUNT, P. J., and MCLAUGHLIN, J., concur.

INGRAHAM, J. (dissenting). The complaint alleges three causes of action: First. That the plaintiff, a domestic corporation, on and before the 14th of September, 1895, purchased from one Delery a certain manufacturing business, conducted in the city of New York, which business consisted of a lease of the premises 502-504 West Forty-Fifth street, some old machinery, and some secret processes for manufacturing products described in the complaint. That said secret processes were owned by the said Delery, but were not known to him, but were known to the defendant, and were the most available part of the business so owned by the said Delery. That on the 14th day of September, 1895, it was mutually agreed between plaintiff and defendant that if plaintiff would purchase the said business from said Delery, and would agree to engage the defendant as its agent, at a salary of $25 per week, and to give to the defendant an interest in the profits of said business, said defendant would work as the agent of the plaintiff, would disclose and show to the said plaintiff all the secret processes which the plaintiff was about to purchase from the said Delery, would agree not to communicate the said processes to anybody else, and would agree not to manufacture the articles from said processes himself, should he thereafter leave plaintiff's employ; nor would he engage in the same line of business. That plaintiff purchased said business from said Delery, engaged the defendant at a salary of $25 per week, gave to said defendant an interest in the profits of its business, and performed all parts of its said agreement by it to be performed, but that the said defendant, although duly requested, has failed and refused to disclose and show to the said plaintiff the various secret processes; has failed to perform his part of the said agreement, and has, without just cause or reason, left the employ of the plaintiff; has started a factory for the purpose of manufacturing the said articles from the said processes above herein mentioned, and has notified the plaintiff that he intends to manufacture the same, and to stay in that line of business. That the said defendant has organized said business about five blocks distant from that of the plaintiff. For a second cause of action, plaintiff alleges that it was mutually agreed between plaintiff and defendant that defendant should work as an agent of plaintiff to improve the secret processes which plaintiff had purchased of the said Delery, and to discover other secret processes for making new products, and, in consideration of and for defendant's agreement so to work for plaintiff, plaintiff agreed to give defendant a salary of $25 per week, and an interest in the profits of its business; that while in the employ of the plaintiff, and while engaged in working on behalf of plaintiff, defendant made improvements in the processes which plaintiff had purchased of said Delery, and defendant also discovered another secret process for the manufacture of plaintiff's goods; that the defendant has threatened and is about to use said improvements and the said process. which he discovered while in the plaintiff's employ to manufacture

and 85 New York State Reporter.

for the company which he has organized, and to disclose the same to the parties interested in the said company, which, if carried out by said defendant, would be a great disadvantage to the plaintiff. For a third cause of action, it is alleged that it was mutually agreed between plaintiff and defendant that, in consideration of and for plaintiff's engaging defendant as above stated, the defendant would agree not to disclose any secrets or secret processes or other information relating to the business of the plaintiff, which said defendant should learn from other employés of the plaintiff while said defendant was in the plaintiff's employ; that, while in the employ of the plaintiff, said defendant learned certain secret processes (described); and that the defendant has left the plaintiff's employ, has organized a corporation, and is about to start the manufacture of various articles now manufactured by plaintiff, as in the first and second causes of action alleged. And the plaintiff demands judgment restraining the defendant from disclosing to any person or persons information concerning the manufacture of the articles mentioned in the complaint, or disclosing to any person or persons any information concerning the improvements in the processes which said defendant discovered in the plaintiff's employ, and from manufacturing any of the articles described in the complaint, or aiding in the manufacture of the same.

The general manager of the plaintiff corporation, who purchased the business from Delery, testified that before he made the purchase he had a conversation with the defendant, who stated to him that he was acquainted with the secret processes employed in the conduct of the business; that he could make the goods "better than anybody on the market"; that he had a large trade with several wall-paper manufacturers, whom he could control; and that, if the plaintiff purchased the business, he would stay with the plaintiff, and disclose all these secrets. And, as the witness stated, “he promised everything." "We were to give him so much a week. I believe it was $20 or $25 a week.-$25 a week." Subsequently the witness had another conversation with the defendant. At this conversation the witness told the defendant that he was about to close with Dr. Delery, and buy the business; and the witness wanted the defendant to understand that without him the plaintiff would be practically powerless to go on with the business, because none of them knew anything about the business, and had never engaged in any business like it before. "I said to the defendant that: 'If we buy this business from Dr. Delery, will you agree to stay with us, show us the business,-show nie, particularly, and put down all the formulas? And then, after we are in it, and invest more money, you must agree that you will never leave us in the lurch, and go out with anybody else, and start any business, or disclose these secrets to anybody else; otherwise we wouldn't buy the business.' He then assured me that if we bought the business from Dr. Delery, and paid him $25 a week as a salary, that he would disclose all these secrets; that he had other things which he thought he could make, and which he would try to make, and he would never go into the same line of business." The witness

further testified that they then purchased the business from Delery, paying $2,700 for it, and that the same was purchased solely on the faith of the representations of the defendant; that.thereafter, on behalf of the plaintiff, the witness engaged the defendant to work for the plaintiff, and he started in to work for the plaintiff; that his salary at that time was $25 a week; that he subsequently asked the defendant to show him how to make the various articles which the plaintiff purchased of Delery, but that "he put it off, on one pretext or another," and failed to disclose such secret processes; that the defendant was in the employ of the plaintiff until some time in February, 1897, when the defendant called the witness' attention to the promise of an interest in the profits of the business, and asked whether it could be arranged so that he (defendant) could get an interest in the business; that the witness said: "Yes; if you do your duty, and we make money, I will see that you get a fair interest in it." This was all, apparently, that was ever done towards giving the defendant an interest in the business, which it is alleged in the complaint the plaintiff promised the defendant; and immediately after their conversation, and the refusal by the plaintiff to give the defendant an interest in the business, the defendant left the plaintiff's employ. The bill of sale from Delery to plaintiff was not produced. The witness says that he does not remember what the bill of sale of the business contained, or whether it said anything about secret processes, but he did not think it did. The witness further testified that before he purchased the business the defendant said to him:

“ “If you will buy this business, I will show you and instruct you in the manufacture of all these articles.' I said: 'Supposing we could not agree, or anything? He said: 'I can make a living. I can go into another line. I have been in other lines.' I said: 'You know it would ruin us, because I don't know the people, and it would take me some time.' He said: 'I will stay with you until you thoroughly know everything.' He said: 'I won't agree to stay with you forever, but, if I don't, I will agree not to go into that line.' That was before we purchased the business."

The witness testified to other conversations with the defendant, but they were substantially to the same effect. There was no agreement made by the plaintiff that they would employ the defendant for any particular time, or that they would ever pay him any sum of money. Nor was there every any consideration paid to the defendant.

It is quite clear that this contract was unilateral. It imposed no obligation upon the plaintiff to do anything. For it the defendant received no consideration. The defendant was at the mercy of the plaintiff,--to be dismissed at any moment. The condition upon which the obligation of the defendant arose was that if the plaintiff would employ him, by some valid contract of employment, at a salary of $25 a week, and would give him an interest in the profits of the business, the defendant would work as agent of the business. It is not alleged that plaintiff offered to make any such contract with the defendant. He was simply continued in the employ of the plaintiff, and paid a salary while so employed; and it expressly appears from the testimony of the

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plaintiff's manager that the defendant requested the plaintiff to give him an interest in the business, which the plaintiff refused to do; so that, so far as the plaintiff assumed any obligations to the defendant, the plaintiff had refused to perform them. That a court of equity should by decree specifically enforce a contract thus made, when the parties seeking such judgment have neglected to perform the covenants which they assumed, and specifically refused to give to the defendant an interest in the business which the plaintiff admits they promised, would be opposed to all principles of equity, and would result in merely compelling the defendant to remain in the plaintiff's employ, while the plaintiff, on their part, were under no obligation to continue such employment, and had refused to give the very interest which was the inducement to the defendant to make the promise. It is quite evident that if the defendant were to remain in the employ of the plaintiff, devoting all his time to the advancement of the business, making inventions for the benefit of the business, and disclosing such inventions, when made, to the plaintiff, his protection required that he should have some binding obligation from the plaintiff, by which he would be assured some advantage from his efforts and inventions; and when the plaintiff refused to make any such binding contract, which would place the defendant in a position to enforce it, so that he would not be subject to a discharge at the mere whim and pleasure of the plaintiff, it would seem to be most inequitable to compel the defendant by injunction specifically to perform the agree ment on his part, and thus create by injunction an involuntary servitude which would continue during the pleasure of the master, but which the servant had no power to terminate, and upon its termination would be entitled to no advantage for the services which he had rendered, except the compensation allowed during the continuance of the employment. There was nothing in the agree ment between the plaintiff and the defendant by which the defendant agreed that his inventions or discoveries during the time of his employment by the plaintiff should belong to the plaintiff, or should be their exclusive property. Nor is it shown that the inventions by the defendant prior to the time that the plaintiff purchased the business were in any sense the property of the former owner of the business. Whatever right this plaintiff acquired by the purchase of the business from Delery, it does not appear that Delery, in terms, attempted to convey to the plaintiff the secret processes that Delery had invented and used. The evidence as to any agreement between plaintiff and the defendant is extremely indefinite, consisting only of conversations by which the defendant sought to induce the plaintiff to purchase the business. It seems to me clear that there was no binding agreement intended to be made by these conversations, certainly none that was understood to be binding upon the plaintiff; and the plaintiff, although requested to make some sort of a binding agreement which would give to the defendant some assurance that he would have an interest in the business, refused to do so. It seems to me that, upon this evidence, there was no contract proved which would justify a court of equity in