A Legal Tangle of Secrets and Disclosures in Trade: Tabor v. Hoffman and Beyond
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Description
State courts in the United States began protecting trade secrets in the mid-nineteenth century as a matter of common law, beginning with the Supreme Judicial Court of Massachusetts’s upholding in 1837 of a contract to maintain the secrecy of a chocolate-making process against a claim that it was void for restraining trade. Later in the century, American courts began to elaborate on the basis for and extent of trade secrecy protection. In this chapter, I explore one such early case from New York, Tabor v. Hoffman, decided in 1889. A study of this case indicates that many present-day concerns about overlapping edges between trade secrecy and patent laws—and their interaction and interference with one another’s aims—were latent, if not overtly raised, when American courts were just beginning to articulate the common law right of trade secrecy. After telling Tabor’s tale, I investigate some of the longstanding interactions and tensions between trade secrecy and patent laws through the lens of the regime’s encouragements of disclosure in some ways and secrecy in others. Moreover, even though trade secrecy law is predominantly focused on secrecy, in some ways it enables disclosure. By contrast, although patent law is preoccupied with disclosure, in some ways, it permits and encourages secrecy. In all, patent law and trade secrecy together create a legal tangle of secrets and disclosures in trade. A full review of the Tabor case suggests that the innovator there was able to take advantage both of trade secrecy’s disclosures and patent law’s secrets. The court did not appreciate this possibility, instead focusing on the unfairness to the plaintiff of the defendant’s appropriation. Benjamin Tabor invented a 325-pound iron and brass pump known as “Tabor’s Rotary Pump,” which “[wa]s designed for pumping tan-bark and the liquor with it, and other thick liquids.” The pump was very successful in the marketplace. So as to mass produce the pump, Tabor made thirty-six pieces of patterns for the pump’s parts, from which the pump could be manufactured. Making these patterns for the pump correctly, according to Tabor, “required a good deal of time, study, thought, labor and money.” As per Tabor, the reason for this significant expenditure of time and money to translate the pumps into corresponding patterns is because the patterns do not match up precisely to the pump’s pieces because there are both shrinkages and expansions of the pump’s metals under different conditions of hot or cold liquid being pumped through it. Getting the patterns right, on Tabor’s account, requires a “series of experiments,” rather than simple calculations as to shrinkage and expansions. Tabor insisted that he kept these patterns secret and in his possession. Yet he admittedly gave the patterns to Frank Collingnon, a machinist, for the sole purpose that he make pump castings for Tabor. According to Tabor, without Tabor’s or Collingnon’s permission or knowledge, Francis Walz, a pattern maker, measured Tabor’s patterns to make a copy. Walz got Tabor’s patterns from Collingnon’s possession. He was able to do so due to his access to Collingnon’s working space: Walz had a shop in Collingnon’s building and Collingnon sometimes gave him permission to take other patterns. Tabor claimed that William Hoffman had paid Walz to take these patterns and then Hoffman used a copy of them to produce pumps. In Tabor’s view, Walz and Hoffman had copied his patterns to avoid the significant expenditure required to use the pumps themselves to derive corresponding patterns. Tabor professed that owing both to the shrinkages and expansions of the pump’s metal and brass castings hiding from view parts of the pump, “[a] perfect set of patterns could not be made from seeing a finished pump.”
Source Publication
Intellectual Property at the Edge: The Contested Contours of IP
Source Editors/Authors
Rochelle Cooper Dreyfuss, Jane C. Ginsburg
Publication Date
2014
Recommended Citation
Fromer, Jeanne C., "A Legal Tangle of Secrets and Disclosures in Trade: Tabor v. Hoffman and Beyond" (2014). Faculty Chapters. 642.
https://gretchen.law.nyu.edu/fac-chapt/642
