John Vickery versus Jonas Welch, 19 Pick. 523

Putnam J. delivered the opinion of the Court. The defendant contends that he has performed or offered to perform all that was required of him in the condition of the bond; while the plaintiff, on the other hand, denies any such performance or offer ; and the question is to be settled by determining what was the true intent and meaning of the bond. It is very clear that both parties had reference to the defendant’s exclusive and secret art of making chocolate, and that art was to be conveyed to the plaintiff, together with the chocolate mills, Sic.

It must be taken that such transfer entered greatly into the value or consideration which the plaintiff stipulated to give for the property. The defendant was to transfer to the plaintiff, for his exclusive use, the secret manner which the defendant had of making chocolate. It must have been represented and understood by the parties, that the defendant had used such an exclusive art, which had given great advantage to him in the manufacture of chocolate.

The plaintiff was to become the proprietor of the mills, and also of the secret mode of manufacture which the bond supposes was used and possessed by the defendant. The defendant was to sell, the plaintiff was to buy. Now we cannot perceive the least reason which, after such sale, would enable the defendant lawfully to retain any right in the property or rights sold, nor any right to convey to strangers, any part of what was to be transferred to the plaintiff.

The exclusive right was to be transferred to the plaintiff, and we cannot conceive that it , would be exclusive, if the defendant might, after such transfer, admit as many persons to participate as would pay for, or receive gratuitously, the same privilege which the defendant had granted or stipulated to grant. Nor is there any difficulty in making a grant of this right, with proper covenants touching the same, in the deed conveying the real estate.

It would have been sufficient, after describing the real estate, to have added, “ together with the grantor’s exclusive fight and art or secret manner of making chocolate, and all information pertaining to his said manner of making chocolate,” in the words of the condition of the bond, with a covenant (which the bond necessarily implies) in the nature of further assurance, to communicate all the information necessary to enable the plaintiff to have, use and enjoy the right or secret art exclusively, and a covenant that the plaintiff should from thenceforth have, use and enjoy the same right or secret art exclusively, without any lawful interference from any person or persons whomsoever.

It would not have been necessary to spread the secret af large in the conveyancing and place the same upon the public records of the county. That proceeding, as everybody sees, would have defeated the very transfer of the right. It was known to both parties, that there was no patent right granted to the defendant. It was for his exclusive secret that the parties treated, and the secret would not be kept if put at large upon the records.

But there was no difficulty in assuring this right to the plaintiff in general and apt words, with covenants to do all things, and give information in all things and matters, necessary to enable the plaintiff to use and enjoy the right; and that instruction and information should have been given to the plaintiff in private, to the end that he might preserve the right, that he might keep the secret, for his own use and exclusive enjoyment. But the defendant has refused to do so.

He has given such a construction as would enable him, for love or money, to communicate the secret to all other people; a construction which we think entirely inconsistent with his obligation to the plaintiff, and he has refused to assure the right to the plaintiff according to the true intent and meaning of the condition of the bond, although the plaintiff has done all things incumbent upon him to do as conditions precedent to such assurance. It was contended for the defendant, that this obligation was void as being in restraint of trade. But we cannot suppose that the case comes within that doctrine. Bryson v.

Whitehead, 1 Sim. & Stu. 74. The defendant claims to operate by a secret art. The public are not prejudiced by the transfer of it to the plaintiff. If it were worth any thing, the defendant would use the art and keep it secret, and it is of no conse quence to the public whether the secret art be used by the plaintiff or by the defendant. We are also of opinion, that there was a breach of the bond when the defendant refused, at his house in Braintree, to convey to the plaintiff himself.

The verbal agreement which the plaintiff had made with his associates, had no effect to alter or change the liability of the defendant on his bond to the plaintiff, inasmuch as he, the defendant, had refused to assure the right to the plaintiff and his associates, and they, in consequence of such refusal, abandoned the enterprise. It is the opinion of the whole Court, that the bond has been forfeited by the defendant, and that he may be heard in chancery touching the damages.