Franke v. Wiltschek

FRANK, Circuit Judge

(dissenting in part; i. e., as to the nature of the relief).

I entirely agree that plaintiffs are entitled to relief, and disagree solely as to the kind of relief (i. e., a perpetual injunction). I think money damages will be wholly adequate. To make my position clear, I must first high-light the facts of this case which I think indisputable :

(1) When defendants first came on the scene, plaintiffs were already marketing their wash-cloths publicly, so that anyone could buy them. (2) A previously expired patent (not owned by plaintiffs) revealed all the elements of plaintiffs’ process for making these cloths, excepting only two nonpatented and non-patentable features, i. e., (a) plaintiffs compressed a perfumed wash-cloth instead of a perfumed rectangle of woolen material or ball of absorbent cotton, described in the patent, and (b) plaintiffs made some mechanical changes in the hydraulic press described in the patent. 1 (3) Those two slight, added features any ordinary, moderately adept workman — not necessarily a “skilled mechanic” — could easily have discovered in a short time from a study of plaintiffs’ publicly-marketed wash-cloths. (4) But without such a study, defendants learned of these features through establishing a confidential relation with plaintiffs. (5) By breaching the obligations of that relation, defendants wrongfully used what they had learned from plaintiffs. (6) All that plaintiffs lost, however, from defendants’ misconduct was plaintiffs’ advantage over competitors for the brief period which would end when such competitors discovered those unpatented features of plaintiffs’ process through a study of plaintiffs’ washcloths.

On these facts, my colleagues conclude that the trial court lacked all discretion concerning the relief to be accorded plaintiffs, and was obligated to enjoin defendants “perpetually” from making or selling wash-cloths like plaintiffs’. 2 In reaching that conclusion, my colleagues assert that the New York courts have adopted an inflexible rule that, in cases of this class, they must always issue a perpetual injunction, that those courts have no discretion whatever to grant any lesser relief, such as a decree for money only. I think this is not the New York rule (as I shall try to show later). But what makes my colleagues’ decision important and deeply disturbing is that they assert the following proposition:

If the highest court of a State rules that, in a certain class of cases, equity is stripped of all discretion and must always grant, automatically, a perpetual injunction, then (say my colleagues) thanks to Guaranty Trust Company of New York v. York, 326 U.S. 99 [ 65 S. Ct. 1464 , 89 L.Ed. 2079 ], a federal court, sitting in that State in a diversity case falling within that class of cases, must likewise surrender all discretion and mechanically issue a perpetual injunction.

My colleagues base this proposition on but a portion of a sentence in Guaranty Trust Co. of New York v. York, 326 U.S. 99 , at page 109, 65 S.Ct. 1464 , at page 1470, 89 L.Ed. 2079 . But I quote, *501 as follows, the entire sentence, in its context, which shows, I think, that my colleagues have overlooked precisely that part of the Court’s opinion which applies to the case at bar: “And so the question is not whether a statute of limitations is deemed a matter of ‘procedure’ in -some sense. The question is whether such a statute concerns merely the manner and the means by which a right to recover, as recognized by the State, is enforced, or whether such statutory limitation is a matter of substance in the aspect that alone is relevant to our problem, namely, does it significantly affect the result of a litigation for a federal court to disregard a law of a State that would be controlling in an action upon the same claim by the same parties in a State court?” 3 Nor was this a casual comment. For the Court also said: 4 “State law cannot define the remedies which a federal court must give simply because a federal court in diversity jurisdiction is available as an alternative tribunal to the State’s courts. Contrariwise, a federal court may afford an equitable remedy for a substantive right recognized by a State even though a State court cannot give it. * * *

When, because the plaintiff happens to be a non-resident, such a right is enforceable in a federal as well as in a State court, the forms and mode of enforcing the right may at times, naturally enough, vary because the two judicial systems are not identic.” 5

My colleagues’ opinion in this respect conflicts directly with two rulings of the Third Circuit uttered since Guaranty Trust Co. of New York v. York; Anheuser-Busch v. DuBois Brewing Co., 3 Cir., 175 F.2d 370, 373 ; Campbell Soup Co. v. Wentz, 3 Cir., 172 F.2d 80, 81-82 . See also Black & Yates v. Mahogany Ass’n, 3 Cir., 129 F.2d 227, 233 , 148 A. L.R. 841. Until today no other Circuit has disagreed with the Third. And it is perhaps not amiss to note that when once before this court extended the York case doctrine, purporting with marked confidence to apply its “clear implications,” the Supreme Court reversed. See Holmberg v. Armbrecht, 327 U.S. 392 , 66 S.Ct. 582 , 90 L.Ed. 743 , reversing, 2 Cir., 150 F.2d 829, 832 . 5a

My colleagues’ present interpretation of Guaranty Trust Co. of New York v. York is noteworthy for, under it, in diversity cases, many of the Federal Rules of Procedure, 28 U.S.C. would go down the drain, since they do “significantly affect the result of litigation.” Consider, for instance, Rule 43(a) providing that evidence excluded in a state court is admissible if previous federal rulings in equity cases would admit it; the application of that Rule may lead to a federal decision not possible if the case had been tried in a state court. What of Rule 38 in a state where, in a suit of an equity character, a jury is demand-able as of right? Think, indeed, of Rule 2, as to the joinder of “legal” and “equitable” claims in a diversity suit in a federal court in New York. Will not Ring v. Spina, 2 Cir., 166 F.2d 546, 550 , often yield a markedly different result than *502 would eventuate if DiMenna v. Cooper & Evans Co., 220 N.Y. 391 , 115 N.E. 993 , governs ? The sensible approach to such problems, suggested by Judge Clark in 1941, is surely that the federal Rules should be followed “unless some very vital interest of state law is being set aside.” 5b

If my colleagues are right about the New York rulings, a correct reading of the York case is distinctly relevant, as my colleagues recognize. For if my interpretation of the York case is correct, then, regardless of the New York rulings, we should carefully consider the discussion in § 757 of the Restatement of Torts, Comments a and b, for it almost literally describes the facts of this case. It is there said that the duty of persons in a position like defendants does not stem from the ownership by plaintiffs of any “property right” in the secret. 6 It derives from a “general duty of good faith” which calls for legal “protection * * * against breach of faith and reprehensible means of learning another’s secret.” 7 Consequently, so the Restatement reports (§ 757, Comment b), while a protected trade secret “may be a device or process which is patentable,” it “need not be that. It may be a device or process which is clearly anticipated in the prior art or one which” — as here— “is merely a mechanical improvement that a good mechanic can make. Novelty and inventiveness are not requisite for a trade secret as they are for patent-ability. These requirements are essential to patentability because a patent protects against unlicensed use of the patented device or process even by one who discovers it properly through independent research. The patent monopoly is a reward to the inventor. But such is not the case with a trade secret.” The legal protection given such a secret is so limited that “it is not appropriate to require * * * the kind of novelty and invention which is a requisite of patentability.”

But, significantly, the Restatement at once continues as follows: “The nature-of the secret is, however, an important factor in determining the kind of relief that is appropriate against one who-is subject to liability under the rule stated in this Section. Thus, if the secret consists of a device or process which is a novel invention, one who acquires the secret wrongfully is ordinarily enjoined from further use of it and is required to account for the profits derived from his past use. If, on the other hand, the secret consists of mechanical improvements that a good mechanic can make without resort to the secret, the-wrongdoer’s liability may be limited to-damages, and an injunction against future use of the improvement made with the aid of the secret may be inappropriate.” It is this statement which my 'colleagues lightly call “offhand” and reject. I cannot agree. Professor Harry Shulman, the Reporter of this portion: of the Restatement, 8 is a scholar known for his acumen, his poise and care. The-Advisers included two eminent federal judges, Learned Hand and Augustus N_ *503 Hand, and two lawyers, later to become federal judges, highly respected for their learning and thoughtfulness, Goodrich and Wyzanski. 9 None of these men was likely to endorse a careful formulation and carelessly follow it by “an offhand repudiation at its end.”

Their differentiation as to remedies makes much sense, for these reasons: (a) The harm done by a defendant’s breach of a plaintiff’s confidence is the use of the secret to the plaintiff’s “loss” or “detriment.” (b) By defendant’s wrong he deprives plaintiff of a trade secret defined as something which gives plaintiff “an opportunity to obtain an advantage over competitors.” (c) Where the device or process consists of a “novel invention,” the plaintiff may have chosen not to patent it — which would limit the period of his monopoly — but to keep the invention to himself with the expectation that no one, except those in his confidence, will discover the secret, so that his monopoly will endure for an unlimited time. If the defendant comes to know the secret of such an invention by improper means his use of this knowledge will cause a loss to plaintiff for an indefinite future period during which plaintiff will lose his “opportunity to obtain an advantage over competitors.” Wherefore a perpetual injunction affords a proper protection — a protection as enduring as the monopoly grounded on the secret invention, (d) But where the secret involves only a slight, non-patentable and easily-discoverable improvement, competitors will soon, in all probability, legitimately learn how to contrive this improvement. Consequently, defendant’s wrong has caused a loss of plaintiff’s “advantage over competitors” which, at most, would not have lasted long. Perpetually to enjoin defendant in such circumstances would be to harm him without regard to the loss or detriment suffered by plaintiff.

In short, such an injunction — continued beyond the time when, in all likelihood, the trade, by legitimate means will catch up with the plaintiff — is sheer punishment, nothing else. In a closely related tort field, when a defendant has knowingly copied plaintiff’s trade-name, a court will not issue a perpetual injunction against defendant’s doing business but will allow defendant to continue in business if he adopts a revised name that is not likely to confuse: 9a When the damage to plaintiff ceases, the restraint of defendant ends; the restraint does not continue thereafter for the purpose of punishing the wrongdoer.

So here, I think no injunction should issue. True, these defendants have done a legal wrong and acted unethically. But that is also true in many a tort case where there is no punitive or deterrent element in the judgment except that contained in the exaction of damages that will roughly compensate the plaintiff; 10 when, in such a case, damages achieve the end of thus compensating plaintiff, the possibility that they do no more to punish the defendant is not regarded as showing that damages are so “inadequate” as to justify equitable relief; nor has the failure to issue injunctions in such cases been regarded as encouragement to wrongdoers. No more should it be so regarded in the case at bar. To say that a denial of a perpetual injunction in a case like this will be to destroy any real requirement of good faith in business-trust relations is to assert confidently that the grant of such an injunction would serve, punitively, to deter breaches of good faith in such relations. But as there is no basis in our present state of ignorance, about the deterrent effect of judgments in civil suits for *504 such an assertion, I think we ought not rely on it to justify punitive injunctions. The courts in civil suits do not attempt to punish breaches of duty even by express trustees unless the misconduct “has the character of outrage frequently associated with crime,” 11 in which event the punishment takes the form of punitive damages. I think defendants’ misconduct here was not so heinous as to render appropriate the imposition of such damages. 12

And so I come back to the federal rulings as to equitable remedies. Repeatedly, the Supreme Court has underscored their flexible, discretionary character; has said that equitable relief should turn on the necessities of the particular ease; has repudiated the notion that equitable remedies, including injunctions, should be used punitively. Thus in Hecht Co. v. Bowles, 321 U.S. 321, 329 , 64 S.Ct. 587, 591 , 88 L.Ed. 754 , the Court said concerning an injunction: “We are dealing here with the requirements of equity practice with a background of several hundred years of history. Only the other day we stated that ‘An appeal to the equity jurisdiction conferred on federal district courts is an appeal to the sound discretion which guides the determinations of courts of equity.’ Meredith v. City of Winter Haven, 320 U.S. 228, 235 , 64 S.Ct. 7, 11 , [ 88 L.Ed. 9 ], The historic injunctive process was designed to deter, not to punish. The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it.” 13 See, e. g., Di Giovanni v. Camden Fire Ins. Association, 296 U.S. 64, 71-72 , 56 S.Ct. 1, 5 , 80 L.Ed. 47 : “Equity not infrequently withholds relief which it is accustomed to give where it would be burdensome to the defendant and of little advantage to the plaintiff. See Harri-sonville, Mo. v. W. S. Dickey Clay Mfg. Co., 289 U.S. 334, 335, 338 , 53 S.Ct. 602 , 77 L.Ed. 1208 , and cases cited; cf. Willard v. Tayloe, 8 Wall. 557 , 19 L.Ed. 501 ; Hennessey v. Woolworth, 128 U.S. 438 , 9 S.Ct. 109 , 32 L.Ed. 500 ; McCabe v. Matthews, 155 U.S. 550, 553 , 15 S.Ct. 190 , 39 L.Ed. [253] 256.” 14

The New York rulings are to the same effect: Equitable relief is to be adapted, in the sound discretion of the Chancellor, to the circumstances or exigencies of the particular case; such relief will not be granted if it will work hardship and injustice to the defendant and very little-if any benefit to the plaintiff; 14a there-is no absolute right to an injunction. 15 In a trade secret case, in particular, an injunction will be granted only if plaintiff has no adequate remedy at law. 16

My colleagues, however, cite Tabor v.. Hoffman, 118 N.Y. 30 , 23 N.E. 12 , as. holding that, whenever a defendant misuses a confidential relation by exploiting- *505 a secret process, invariably the defendant will be permanently enjoined, no matter how easy it would have been to discover the secret without any confidential disclosure by the plaintiff. I think that is a mistaken version of the facts of that case, which were as follows: The plaintiff had invented and patented a pump. After the patent expired, he manufactured and sold a pump containing improvements on the original which he did not patent. These improvements were incorporated in patterns which he kept secret. An independent contractor, hired by the plaintiff to repair these patterns, secretly made copies of them which the defendant used to manufacture pumps he sold in competition with plaintiff. The trial court found that, only with great difficulty, could anyone, merely from a study of the pump and the expired patent, learn to make a pump like plaintiff’s. On these facts the trial court granted the injunction which was affirmed by the upper courts. 17 The dissenting opinion in the highest court, *506 maintaining that there was no case for equitable relief, admitted the difficulty of discovering the secret but relied on the following untenable arguments: The invention did not consist of the patterns but of the idea represented by them; and the defendant had no contractual relation with plaintiff. The majority opinion turned on the particular facts of the case, which differed markedly from those of the case at bar. Neither in the Tabor case nor elsewhere have the New York courts (or, for that matter, have any other courts) ruled that, regardless of the particular facts, in a trade-secret case, an injunction must always issue, and money damages will never suffice.

My colleagues’ treatment of the New York trade-secret cases is, I think, an illustration of a practice to which Chafee has called attention: 17 In an opinion in an equity suit, “observations on the facts are often intermingled with observations on the law. Hence, the judge may formulate what looks like a general proposition, which may be entirely correct as to the facts before him but is really inappropriate to other (‘though somewhat similar) facts. If his opinion is printed in the reports, a judge in another case may use this proposition as a precedent, without realizing that in large measure it is really like a jury verdict and ought to decide nothing as to future cases. In an appellate decision in equity, also, the same infusion of the facts into apparent propositions of law may occur with like consequences.” Thus Lord Halsbury, in Colls v. Home & Colonial Stores [1904], A.C. 179, 184, said: ■ “I think that the whole subject has been confused by certain- decisions which were dependent on the facts proved, and were incautiously reported as laying down principles of law, when they were, in my view, only intended to be findings of fact in that particular case.” 17b

Even assuming, then, that Guaranty Trust Co. of New-York v. York has the meaning my colleagues ascribe to it, there is nothing, I think, in the New York cases to require a muscle-bound decision here. Nor does anything in the Restatement 18 or in Corbin’s Contracts 19 suggest any such rigidity. *507 True, there is a judicial “trend in the direction of enforcing increasingly higher standards of fairness or morality in trade.” But the enforcement of those standards does not call for mechanistically issued decrees based on a concept of punishment for past misdeeds. It would be strange if today, when punishment of crime is becoming ever more flexible, individualized, 20 equity, in a stereotyped manner, were to use injunctions punitively and without regard to the particular facts of the cases.

I fail to comprehend my colleagues’ reason for twice referring to the fact that, through the confidential relation, defendants obtained a knowledge of plaintiff’s cost of production and sales records. My colleagues say that this knowledge may have stimulated defendants to violate their duty. But that fact has no bearing on the propriety of issuing an injunction when money damages will afford adequate relief.

I think that defendants should be obliged to do no more than to account to plaintiffs for damages and profits for the short period in which plaintiffs would have been free of competition, if defendants had not violated their duty. To be sure, this time limitation entails some conjecture. So, however, do many other measures of damages in cases where the presence of the conjectural element does not lead to equitable relief. Moreover, in a case like this, the rule applies that the proof of damages need not be too precise and that a considerable measure of conjecture is proper, because defendants’ own wrong caused whatever difficulties of computation exist. See, e. g., Package Closure Corp. v. Sealright Co., 2 Cir., 141 F.2d 972, 979 ; Bigelow v. RKO Radio Pictures, 327 U.S. 251, 264-265 , 66 S.Ct. 574 , 90 L.Ed. 652 . 21

Difficult to reconcile with my colleagues’ decision here is Foundry Services, Inc. v. Beneflux Corp., 2 Cir., 206 F.2d 214, 216 , opinion by Judge Chase. There, but a few months ago, this court reversed a temporary injunction order restraining defendant from violating an agreement with respect to a secret process owned by plaintiff, saying of the injunction: “It serves to prevent the appellant from competing or from aiding others in competing with the appellee in the United States. The ordinary and natural result of such competition would be to dampen the sales of the appellee; but since any loss so caused could, if a wrong, be adequately redressed by money damages ascertainable upon proof, it does not constitute the irreparable injury necessary to justify an injunction pendente lite.” 22 To be sure, there the injunction was not permanent; but the views expressed as to the adequacy of damages seem fully applicable here. The case shows also (contrary to what my colleagues seem to suggest) that a reversal of an injunction order for “abuse” of discretion on the ground that damages are adequate — although (as my colleagues say) the reversal “forces” the trial judge not to grant equitable relief— *508 is not at all inconsistent with the notion that equity is always flexible.

Appendix

The expired patent:

“United States Patent Office.

“Henry Casevitz, of Paris, France.

“Hygienic Textile Sponge.

“1,074,245. Specifications of Letters Patent. Patented

Serial No. Sept. 30,

“Application filed June 25, 1913. 775,732 1913.

“To all whom it may concern:

“Be it known that I, Henry Casevitz, a citizen of the Republic of France, residing in Paris, France, have intended a new and useful Improvement in Hygienic Textile Sponges, which invention is fully set forth in the following specification.

“The object of the present invention is a hygienic and perfumed sponge of textile material.

“The use of sponges for toilet purposes is contrary to all hygienic and antiseptic precepts. Subjected, in fact, to the simultaneous action of heat and moisture, the microbes that the sponges contain are placed under the most favorable conditions for their development just as they would be in a culture designed for such purpose. To remedy these drawbacks the applicant proposes to replace the ordinary sponge by a woolen material or a little ball of absorbent cotton, which would be only used once in a toilet operation and can be thrown away on account of its small cost. It is convenient to incorporate in this cloth or in the small cotton ball a perfumed antiseptic substance, mixed preferably with a soap-like product so that when the cotton is thrown into cold or tepid water, that is used for the toilet, a liquid is formed pleasant to the skin and consistent with hygienic principles. It is not indispensable to incorporate in the sponge an antiseptic product to give it the desired hygienic qualities. The sponge in question can be rendered antiseptic by simply passing it through a stove, and for all ordinary purposes it is sufficient if it be

manufactured with care and cleanliness without the necessity for placing it in a liquid really antiseptic or aseptic. Moreover, the preparation and the compression of the sponge can be attained either by pressure by means of some suitable press or by blows. To impart to the cotton a form more suitable for sale, and transport, it is convenient to compress it by means of a hydraulic or other press to obtain thus small packets of a useful shape, which, placed in water, will rapidly and easily regain their original size.

“In the accompanying drawings:

“Figures 1, 2, and 3 are views illustrative of successive steps in the formation of the hygienic sponge of this invention; Figs. 4 and 5 illustrate the swelling of the sponge of Fig. 3 when saturated with water.

“In forming my hygienic sponge of cotton for example, I preferably take a piece of hydrophil cotton of rectangular form, Fig. 1, and give it a double fold as shown in Fig. 2. The piece of cotton thus folded is then placed in a tubular matrix and subjected to pressure, by a piston working in the cylinder, sufficient to compress the cotton to the form of a circular disk or cylinder as shown in Fig. 3. The sponge or sponges thus formed may be packed in cases or cartons or wrapped in paper. Each disk constitutes a sponge intended for toilet use. When-in using such a sponge it is plunged into water; it rapidly lengthens to approximately the form shown in Fig. 4, and then further swells and spreads to the *509 form shown in Fig. 5, to a volume which may be approximately twenty times the volume of the compressed disk.

“What is claimed is:

“1. A hygienic sponge made of a sheet or layer of unwoven fibers folded upon itself and highly compressed endwise to the form of a compact wad or disk adapted when saturated with liquid to expand to many times its compressed volume and to unfold to a sheet or layer form.

“2. A hygienic sponge made of a sheet or 85 layer of absorbent cotton folded upon itself and highly compressed endwise to the form of a compact wad or disk adapted when saturated with liquid to expand to many times its compressed volume and to unfold to a sheet or layer form.

“In testimony whereof I have signed this specification in the presence of two subscribing witnesses.

“Henry Casevitz

“Witnesses:

“Luden Memminger,

“Gabriel Belliard.”

Defendants offered this patent in evidence. The trial judge excluded it. Plaintiffs, answering defendants’ contention on this appeal that the exclusion was error, assert that the testimony of one of plaintiffs showed that non-secret processes, like that disclosed by the patent, were in use before plaintiffs continued their minor improvements. Nevertheless, the patent should have been received in evidence. As it is in the record, it is proper for this court to consider it on this appeal.

. The terms of the patent are set forth in the Appendix to this opinion.

. The order provides that the defendants “* * * are hereby perpetually enjoined from making and selling full sized face cloths compressed and sold as hard cylinders under whatever brand or name.”

. Emphasis added.

. 326 U.S. at page 108, 65 S.Ct. at page 1468 . See Levinson v. Deupreo, 345 U. S. 648, 652 , 73 S.Ct. 914 .

. 326 U.S. at page 108, 65 S.Ct. at page 1469 .

See also 328 U.S. at page 108, 65 S. Ct. at page 1468, note 3 , discussing Pusey & Jones Co. v. Hanssen, 261 U.S. 491 , 43 S.Ct. 454 , 67 L.Ed. 763 . And see Kelleam v. Maryland Casualty Co., 312 U.S. 377 , 61 S.Ct. 595 , 85 L.Ed. 899 .

. There this court said: “The York case indeed went further than this. The essence of its holding is that limitations go to tho substantive rights of the parties, which ought not to vary with the remedy; and hence there should be no distinction in limitation periods in diversity cases between those arising under the federal court’s equity powers and those arising in law, provided the respective state statutes and decisions make no such distinction. And no sound reason is offered why such a distinction should be made when, as here, the right sought to be enforced is created by a federal statute. * * * Such a divergence in treatment is opposed not only to common sense, but also to the clear implications of the York case.”

. Clark, The Tompkins case and The Federal Rules, 24 Am.Jud.Soc.J. (1941) 158, 161. Judge Clark added: “Unless this is done one may say that the federal rules will be endangered,” and that “more than half the rules can be questioned if some of the views already in print as to the wide content of ‘substance’ are sound.” See also, Clark, Procedural Aspects of The New State Independence, 8 Geo.Wash.L.Rev. (1940) 1230; Clark, State Law in The Federal Coui-ts, in the volume Jurisprudence In Action (19531 53, 108-109; Clark, Book Review, 36 Cornell L.Q. (1950) 181, 183-184.

. Holmes, J., in E. I. Du Pont de Nemours Powder Co. v. Masland, 244 U.-S. 100, 102, 37 S.Ct. 575, 576 , 61 L.Ed. 1016 , said: “The word ‘property’ as applied to-trademarks and trade secrets is an unanalyzed expression of certain secondary-consequences of the primary fact that the-law makes some rudimentary requirements of good faith.” Cf. Holmes, J., in Chadwick v. Covell, 151 Mass. 190,194 ,. 23 N.E. 1068 , 6 L.R.A. 839 .

. See Smith v. Dravo Corp., 7 Cir., 203 F.. 2d 369, 373-374, and cases there cited.

. See 4 Restatement, Introduction.

. Ibid.

. See, e. g., Warner & Co. v. Eli Lilly & Co., 205 U.S. 526 , 532-533, 44 S.Ct. 615 , 68 L.IM. 1161.

. As to the punitive or deterremee element in compensatory damages, see, e. g., Morris, Punitive Damages in Tort Oases, 44 Ilarv.L.Itev. (1931) 1173; James, Social Insurance and Tort Liability, 27 N.Y. TJ.L.Itev. (1952) 537, 539; Jaffie, Damages for Personal Injury, Law and Contemporary Problems (1953) 219.

. See Prosser, Torts (1941) 11.

. Some courts have held that equity will never give punitive damages.

. See also Porter v. Warner Holding Co., 328 U.S. 395, 398 , 66 S.Ct. 1086 , 90 L. Ed. 1332 .

. See Minneapolis & St. L. Ry. Co. v. Pacific Gamble Robinson Co., 8 Cir., 181 F.2d 812 ; Hygrade Pood Products Corp. v. United States, 8 Cir., 160 P.2d 816 ; McComb v. Goldblatt Bros., 7 Cir., 166 F.2d 387, 390 ; Walling v. T. Buettner & Co., 7 Cir., 133 P.2d 306 , 308.

. See, e. g., Hubbell v. Henrickson, 175 N.Y. 175, 180 , 67 N.E. 302 ; Bloomquist v. Farson, 222 N.Y. 375, 380 , 118 N.E. 855 ; Thomas v. Musical Mut. Protective Union, 121 N.Y. 45, 52 , 24 N.E. 24 , 8 L.R.A. 175 ; Lexington & Fortieth Corporation v. Callaghan, 281 N.Y. 526, 529, 531 , 24 N.E.2d 316 ; Kane v. Walsh, 295 N.Y. 198, 205-206 , 66 N.E.2d 53 , 163 A.L.R. 1351 ; Troster v. Dann, 83 Misc. 399 , 145 N.Y.S. 56, 58 ; L. Daitch & Co. Inc. v. Retail Grocery & D. C. Union, 129 Misc. 343 , 221 N.Y.S. 446, 447 ;. May’s Purs and Ready to Wear v. Bauer, 282 N.Y. 331 , 26 N.E.2d 279 ; Nann v. Raimist, 255 N.Y. 307, 308 , 174 N.E. 690 , 73 A.L.R. 669 .

. Conger v. New York, West Shore & Buffalo Railroad Co., 120 N.Y. 29, 32 , 23 N.E. 983 .

. McCall Co. v. Wright, 198 N.Y. 143, 157 , 91 N.E. 516 , 31 L.R.A.N.S, 124»,

. See the opinion of the General Term of the New York Supreme Court, 41 Hun 5 , 7-8: “This action was brought to restrain the defendant from manufacturing and selling pumps made from patterns copied and designed from the patterns designed by the plaintiff, and for damages. The trial court found as facts that the plaintiff is the inventor and owner of what is known as Tabor’s rotary pump, and that he manufactures the same for sale; that he had spent a good deal of time, study, thought, labor and money to make and perfect patterns from which to manufacture the pump. * * * These improvements have never been patented and, consequently, the plaintiff is unable to •claim any protection through the patent laws. He has invented and constructed patterns from which he has manufactured the improved pump. The pump so manufactured has been sold, and in that way given to the public; but the patterns from which it was manufactured have never been sold, but have always been kept subject to his own control and •management. The sale of the machine •does not amount to a publication of the patterns, plans and specifications from which the machine was constructed. It is possible that an individual may be able to procure plans and specifications and •construct patterns from the machine that has been sold, and yet there are doubtless instances in which machinery is so complicated that it would be extremely difficult, if not impossible, so to do. In such a case the sale of the machine and its publication to the world would not enable •others to manufacture and sell the same machine for the reason that the plans, specifications, patterns and devices by which the same was manufactured still remained a secret, locked up in the inventor’s manufactory. Suppose, for instance, that the successful operation of the machine required it to be constructed of a composition or combination of metals, which was the device and invention of the manufacturer; could it be said that the sale of the machine, to be devoted to the uses for which it was constructed, carried with it the right to the secret formula by which the inventor had compounded the material out of which it was constructed, or the manner in which the material had been treated and prepared for use?”

The Court of Appeals, 118 N.Y. 30, 35-36 , 23 N.E. 12 , said: “The precise question, therefore, presented by this appeal, as it appears 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 different pieces, the most of which are made by running melted brass or iron in a mold. The mold 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 he 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, *506 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?”

a. Chafee, Simpson and Maloney, Cases On Equity (1951) 1058-1059.

. See also Wason v. Sanborn, 45 N.H. 169 : “Wherever a fixed and certain rule can be established, it is immensely important that it should be. But there is a large class of cases and of questions, where the circumstances admit of so numerous variations, that no rule can be framed comprehensive enough to reach them. In such cases decisions must be made in the exercise of a sound judgment upon all the circumstances and such decisions can furnish rules for new cases, only where the same circumstances occur, yet there is a constant striving to treat them as precedents, and to regard the expressions used by the courts in stating the grounds of their decisions, and which are true perhaps in regard to the case in hand, as universally true. The effect of this in cases depending in courts of equity, is marked and bad.”

. See Restatement of Torts, § 938, Comment b: “Injunction is a. flexible remedy, capable of adjustment to the peculiar needs of the plaintiff in the particular situation. It is not stereotyped.” Cf. § 941, Comment c (p. 714) to the effect that “the decision must turn, not on the advantage which the plaintiff would gain from the injunction, but on the hardship which he will suffer in the absence of injunction.” And cf. Restatement of Contracts, -§ 367: “Specific enforcement of a contract may be refused if * * * (b) its enforcement .will cause unreasonable or disproportionate hardship or loss to the defendant or third persons.” .

. • See Corbin, Contracts (1951) § 1136: “The ‘adequacy’ of money damages as a remedy must be determined with respect to the facts of each particular case; and there are many kinds of cases in which the answer cannot be said to have become stereotyped. The terms of the contract *507 must not be ‘oppressive’ or ‘unconscionable,’ and enforcement must not involve disproportionate hardship to the defendant or inconvenience to the public, or specific performance will not be decreed.”

. Williams v. People of State of New York, 337 U.S. 241, 247, 250 , 69 S.Ct. 1079 , 93 Xi.Ed. 1337.

. The considerable expansion of this rule has been fairly recent; this may perhaps explain why, in cases such as that at bar, damages have not been generally substituted for injunctions in accordance with the Restatement of Torts, § 757, Comment d, quoted supra.

. That ease was brought in the federal court in Now York, with jurisdiction based on diversity of citizenship. The court did not discuss any New York authorities. If my colleagues’ opinion in the instant case is correct, then, if it were the rule in New York that a temporary injunction would always issue in such a case, the decision in the Foundry Services ease would have been wrong.