HICKS, Chief Judge.
It is well to make it clear at the outset that this was not an action for infringement of a patent or violation of a trademark. The crux of it is “unfair competition.”
The Ward Baking Company (herein called Ward) is one, of the largest bakers of cakes in the country. Herman S. Zai-kaner was a promoter and salesman. Ru-
zak Industries, Inc., appellee and cross-appellant, a corporation (herein called Ruzak) was organized by Zaikaner but he had no, stock in the company. Its stock was owned by his daughter and son-in-law, Hyman L. Fetterman. Ruzak was engaged in merchandising plastic boxes. Zaikaner styled himself as “the life blood of that business.” He testified: “I am the general sales manager, the designer, the creator, the idea man.”
Zaikaner had a conversation with representatives of Ward, who indicated that they were interested in devising a box that would hold a one pound fruit cake and could be readily sold to middle class people. Zaikaner made up a rough plastic box with a plastic cover that was air proof and which permitted a view of its contents from the outside and which could be reused for other commodities. He took an order from. Ward for 300,000 of these boxes. Ruzak was not a molder and was without capital and Zaikaner began to search for some one who could mold the boxes. As a result of negotiations continuing from December 1946 to April 1947, ap-' pellant and cross-appellee, Tri-State Plastic Molding Co., a partnership (herein called Tri-State), agreed to make the 300,000 plastic boxes for Ward. In the negotiations leading up to this agreement, Tri-State was represented by Robert K. • Gibbs, its principal owner, and who had been in the plastic molding business since 1943. The contract is as follows:
"EXHIBIT 13.
(Original in Book of Original Exhibits as Exhibit
286.)
RUZAK INDUSTRIES, INC.
Division of
TRI STATES PLASTIC HOLDING CO. ■
"Henderson, Ky., April 10, 1947
"Tri-State Plastic Molding Co. PURCHASE
Henderson, Kentucky ORDER
Please ship by Per schedule to Order No.
Per Schedule 1198
This Number Must Appear On Invoice
Quantity Items
300,000 Crystal Clear Polystyrene Boxes,
7y3 x
ZV2
x 3 $260.00M
Delivery to start within 6 to 8 weeks.
Boxes are to be individually wrapped in tissue and packed in cartons in quantities suitable for shipping.
Sample to be submitted for final approval.
Boxes to be billed to Ward Baking Co.
First 260,000 $310.00M
Ditto Next 250,000 $300.00M
Ditto Over 500,000 ?295.00M
All molds are the property of Ruzak Industries and shall only be used for molding of boxes under their supervision.
Acknowledge receipt immediately, stating time of shipment.
SEND INVOICE IN DUPLICATE, Bill of Lading* 1 and Shipping Notice to us.
Note: — This order is to be filed and delivered exactly as specified, and at no price higher than last quoted or charged unless so advised.
TRI STATES PLASTIC MOLDING CO., By Robt K Gibbs.”
Ruzak contends that this contract involved a trade secret; that the confidential relationship between Ruzak and Tri-State required Tri-State to' keep this secret and that equity will enforce this obligation by injunction. This leads us to the inquiry whether such a secret existed, and' if so, what it was. We may assume from the nature of the contract that it did exist, but, after all, it consisted of nothing more than that a plastic box as a container for fruit cakes was being made for the first time.
Zaikaner submitted his idea to Gibbs, who in turn had Tri-State’s engineer design the box and', make the molds for it and TriState manufactured the boxes. The contract was performed and in accordance with its provisions the molds were delivered to Ruzak as its property.
We think that the clause in the contract, to wit: “All molds are the property of Ruzak Industries and shall only be used for molding of boxes under their supervision” carries with it an inference that TriState was under an obligation to keep secret the fact that it was manufacturing plastic boxes for Ward. See John D. Parks & Sons Co. v. Hartman, 6 Cir., 153 F. 24, 32, 12 L.R.A..N.S., 135. But this secret was valuable to Ruzak only as long as it was kept a secret and its disclosure was not a breach by Tri-State. It was
disclosed when Tri-State began the shipments to Ward. The boxes then became articles of merchandise subject to examination by and sale to prospective customers. Dr. Miles Med. Co. v. Platt, C.C., 142 F. 606, 611.
There is no basis for the injunctive process against Tri-State for a breach of confidential relationship. Moreover, it is clear enough that Ruzak lost nothing by the disclosure.
The district court did not furnish us with findings of fact as required by the Rules, Federal Rules of Civil Procedure, rule 52 (a), 28 U.S.C.A., but was content to treat its opinion, delivered orally at the close of the hearing, as sufficient. Referring to the situation upon the termination of the contract, the court said: “Now everything went along fine.” After that time, however, and beginning about July 1948, Tri-State procured other molds from which it made plastic boxes, varying in size, design and capacity, to be used in refrigerators and for other purposes, and sold these boxes to the trade, and about the same time Ruzak, although continuing to send orders to TriState, employed an independent concern to copy Tri-State’s molds and manufacture boxes therefrom' to be delivered to and sold on the general market by Ruzak. This conduct upon Ruzak’s part gave rise to the defense of “unclean hands”’ which the district court did not specifically pass upon and which we find it unnecessary to consider. Nor do we find it necessary to go into great detail concerning the long continued negotiations between the parties except to say that they were characterized by much confusion and frequent misunderstandings. We set forth
in haec verba
the decree from which this appeal by Tri-State and cross-appeal by Ruzak arose.
Laying to one side the question of confidential relationship which we have already considered, we think that, in the exercise of judicial discretion, the injunction should not have issued.
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HICKS, Chief Judge.
It is well to make it clear at the outset that this was not an action for infringement of a patent or violation of a trademark. The crux of it is “unfair competition.”
The Ward Baking Company (herein called Ward) is one, of the largest bakers of cakes in the country. Herman S. Zai-kaner was a promoter and salesman. Ru-
zak Industries, Inc., appellee and cross-appellant, a corporation (herein called Ruzak) was organized by Zaikaner but he had no, stock in the company. Its stock was owned by his daughter and son-in-law, Hyman L. Fetterman. Ruzak was engaged in merchandising plastic boxes. Zaikaner styled himself as “the life blood of that business.” He testified: “I am the general sales manager, the designer, the creator, the idea man.”
Zaikaner had a conversation with representatives of Ward, who indicated that they were interested in devising a box that would hold a one pound fruit cake and could be readily sold to middle class people. Zaikaner made up a rough plastic box with a plastic cover that was air proof and which permitted a view of its contents from the outside and which could be reused for other commodities. He took an order from. Ward for 300,000 of these boxes. Ruzak was not a molder and was without capital and Zaikaner began to search for some one who could mold the boxes. As a result of negotiations continuing from December 1946 to April 1947, ap-' pellant and cross-appellee, Tri-State Plastic Molding Co., a partnership (herein called Tri-State), agreed to make the 300,000 plastic boxes for Ward. In the negotiations leading up to this agreement, Tri-State was represented by Robert K. • Gibbs, its principal owner, and who had been in the plastic molding business since 1943. The contract is as follows:
"EXHIBIT 13.
(Original in Book of Original Exhibits as Exhibit
286.)
RUZAK INDUSTRIES, INC.
Division of
TRI STATES PLASTIC HOLDING CO. ■
"Henderson, Ky., April 10, 1947
"Tri-State Plastic Molding Co. PURCHASE
Henderson, Kentucky ORDER
Please ship by Per schedule to Order No.
Per Schedule 1198
This Number Must Appear On Invoice
Quantity Items
300,000 Crystal Clear Polystyrene Boxes,
7y3 x
ZV2
x 3 $260.00M
Delivery to start within 6 to 8 weeks.
Boxes are to be individually wrapped in tissue and packed in cartons in quantities suitable for shipping.
Sample to be submitted for final approval.
Boxes to be billed to Ward Baking Co.
First 260,000 $310.00M
Ditto Next 250,000 $300.00M
Ditto Over 500,000 ?295.00M
All molds are the property of Ruzak Industries and shall only be used for molding of boxes under their supervision.
Acknowledge receipt immediately, stating time of shipment.
SEND INVOICE IN DUPLICATE, Bill of Lading* 1 and Shipping Notice to us.
Note: — This order is to be filed and delivered exactly as specified, and at no price higher than last quoted or charged unless so advised.
TRI STATES PLASTIC MOLDING CO., By Robt K Gibbs.”
Ruzak contends that this contract involved a trade secret; that the confidential relationship between Ruzak and Tri-State required Tri-State to' keep this secret and that equity will enforce this obligation by injunction. This leads us to the inquiry whether such a secret existed, and' if so, what it was. We may assume from the nature of the contract that it did exist, but, after all, it consisted of nothing more than that a plastic box as a container for fruit cakes was being made for the first time.
Zaikaner submitted his idea to Gibbs, who in turn had Tri-State’s engineer design the box and', make the molds for it and TriState manufactured the boxes. The contract was performed and in accordance with its provisions the molds were delivered to Ruzak as its property.
We think that the clause in the contract, to wit: “All molds are the property of Ruzak Industries and shall only be used for molding of boxes under their supervision” carries with it an inference that TriState was under an obligation to keep secret the fact that it was manufacturing plastic boxes for Ward. See John D. Parks & Sons Co. v. Hartman, 6 Cir., 153 F. 24, 32, 12 L.R.A..N.S., 135. But this secret was valuable to Ruzak only as long as it was kept a secret and its disclosure was not a breach by Tri-State. It was
disclosed when Tri-State began the shipments to Ward. The boxes then became articles of merchandise subject to examination by and sale to prospective customers. Dr. Miles Med. Co. v. Platt, C.C., 142 F. 606, 611.
There is no basis for the injunctive process against Tri-State for a breach of confidential relationship. Moreover, it is clear enough that Ruzak lost nothing by the disclosure.
The district court did not furnish us with findings of fact as required by the Rules, Federal Rules of Civil Procedure, rule 52 (a), 28 U.S.C.A., but was content to treat its opinion, delivered orally at the close of the hearing, as sufficient. Referring to the situation upon the termination of the contract, the court said: “Now everything went along fine.” After that time, however, and beginning about July 1948, Tri-State procured other molds from which it made plastic boxes, varying in size, design and capacity, to be used in refrigerators and for other purposes, and sold these boxes to the trade, and about the same time Ruzak, although continuing to send orders to TriState, employed an independent concern to copy Tri-State’s molds and manufacture boxes therefrom' to be delivered to and sold on the general market by Ruzak. This conduct upon Ruzak’s part gave rise to the defense of “unclean hands”’ which the district court did not specifically pass upon and which we find it unnecessary to consider. Nor do we find it necessary to go into great detail concerning the long continued negotiations between the parties except to say that they were characterized by much confusion and frequent misunderstandings. We set forth
in haec verba
the decree from which this appeal by Tri-State and cross-appeal by Ruzak arose.
Laying to one side the question of confidential relationship which we have already considered, we think that, in the exercise of judicial discretion, the injunction should not have issued. The district court was of the opinion that the case involved the “history of an idea” and.that this idea originated with Zaikaner, hut Zaikaner’s idea, that of a plastic box for cakes, did not give either him or Ruzak a monopoly upon such boxes. His idea was not protected by either the patent or trade-mark laws, [Salvage Proc. Corp. v. Acme Tank Cleaning Process Corp., 2 Cir., 94 F.2d 69, 70] and could be protected only by confidential relationship covered by contract, a point which we have already considered and! found to be of no avail to Ruzak. Zaikaner had the right to keep the idea to himself or to manufacture boxes himself or employ others to do this for him, but he had no monopoly upon its characteristic elements. He could choose for himself the design, size, shape and color of the boxes and the quality of the plastic material (polystyrene) and so could all other plastic molders, as indeed they were doing, as long as they did not attempt to palm off their boxes as those of Zaikaner. Remington-Rand, Inc., v. Mastercraft Corp., 6 Cir., 67 F.2d 218, 220. The district court found no evidence that Tri-State ever undertook to pass off its boxes as those of Ruzak or Zaikaner, and we think that it is inequitable to compel Tri-State to refrain from doing that which all others engaged in the plastic manufacturing business had a right to do.
Tri-State seeks by counterclaim to compel Ruzak to account for any profits it had earned through the use of its designs, molds
and products. The district court did riot specifically pass upon the ■ counterclaim. The failure to do so illustrates the necessity-for- findings of fact'tinder th!e Rule. The Court did -say: “I think they Were malting money so fast out- of the sale of' this product that Zaikaner grit the idea that he could get somebody else to manufacture these things possibly for less money than the defendant Gibbs.”
It is true that Ruzak did employ Associated Plastics to copy Tri-State’s boxes but there is a lack of evidence that Rrizak directly or indirectly misrepresented to its customers that these boxes were manufactured' or distributed by Tri-State. There is evidence to indicate that they cárried Ruzak’s name to distinguish them from, those' of Tri-State.
The decree, appealed from is reversed and both the complaint and the counterclaim are dismissed.