Missouri Decision Summarizes Difference Between Trade Secret and Confidential Information (Brown v. Rollet Bros. Trucking)

In assessing the validity of a non-compete agreement, courts are frequently called upon to assess whether an employer has a legitimate business interest in need of protection. Most states classify trade secrets and customer contacts as protectable interests, and Missouri is no exception.

The recent Missouri appellate decision Brown v. Rollet Bros. Trucking is notable in at least one respect. In affirming the trial court's declaration that a commercial trucking dispatcher's non-compete was invalid, the court examined whether the employee's access to a rate sheet and other pricing information implicated trade secrets concerns.

The court made a distinction between access to an actual trade secret and less valuable confidential information, the latter not amenable to protection through a non-compete. In Brown, the dispatcher was given access to a rate sheet listing his ex-employer's shipping rate and fuel surcharges. That sheet was adjusted at various times - sometimes monthly, sometimes annually. Relying on long-standing Missouri precedent, the court found that this type of confidential information was not a trade secret.

In so holding, the court specifically noted the key difference between the two legal concepts: confidential information is generally limited to a single or ephemeral event in the conduct of a business, whereas a trade secret is a process or device for continuous use in the operation of a business. With respect to pricing out a customer job, a trade secret can be found if the employer uses a specifically developed code or formula to churn out bids. However, as in the Brown case and in countless other fields, pricing information is often fleeting with sales managers given vast discretion to match a competing bid or adjust prices based on a fluctuating cost of materials.

When assessing whether information is truly a trade secret, or merely confidential, attorneys ought to consider whether the information is fleeting and subject to becoming outdated relatively quickly. A set of engineering diagrams, manufacturing processes or other formulas used consistently in the operation of a business differ markedly from rapidly evolving operational information which can become useless after even a short period of time.

--

Court: Court of Appeals of Missouri, Eastern District, Division Four
Opinion Date: 6/16/09
Cite: Brown v. Rollet Bros. Trucking Co., Inc., 291 S.W.3d 766 (Mo. Ct. App. 2009)
Favors: Employee
Law: Missouri

Choice of Law Ends Inevitable Disclosure Case Between Consumer Products Titans (Clorox Company v. S.C. Johnson & Son)

The most interesting inevitable disclosure cases tend to involve the migration of key executives from one direct competitor to another. The cases involving Bill Redmond and Mark Papermaster, among others, have served as influential precedents and will continue to do so for many years.

Another recent executive defection, this time between two well-known consumer products companies, ended with somewhat of a thud.

S.C. Johnson & Son - makers of Ziploc, Drano and Nature's Source - hired away Timothy Bailey to serve as Vice-President of Product Supply. Formerly, Bailey worked in a similar position with Clorox Company, makers of Glad bags, Liqui-Plumr and GreenWorks. Clorox filed suit in Wisconsin against SCJ only, contending that its hiring of Bailey resulted in trade secrets misappropriation. The gist of Clorox's complaint relied on the inevitable disclosure theory of misappropriation, though there were enough conclusory allegations of threatened misappropriation to withstand a motion to dismiss.

The case hinged on choice of law. Clorox chose not to sue Bailey for obvious reasons - the PepsiCo v. Redmond case. Since Clorox and Bailey were California residents, adding him would have destroyed diversity of jurisdiction and Clorox would not have been able to sue in a district court within the Seventh Circuit where PepsiCo remains a significant precedent. It could have sued in Wisconsin state court, but convincing a state court to apply a Seventh Circuit case, which itself applied llinois law, would have been much more of a challenge. And Wisconsin has not adopted the inevitable disclosure theory, so Clorox really had to hinge its case on PepsiCo.

SCJ predictably argued California law applied, and the court agreed. Because of the vague nature of the allegations concerning threatened misappropriation of trade secrets, Clorox lost the injunction motion. In finding California law applied, the court considered a number of important factors, among them the following:

(1) Clorox and Bailey entered into an employment relationship in California, and Bailey apparently executed a confidentiality agreement governed by California law;

(2) California had a significant interest, given its hostility to non-compete agreements and refusal to recognize a closely related doctrine - the inevitable disclosure claim;

(3) The law concerning inevitable disclosure under California law was clear, whereas no Wisconsin case addressed the issue.

The court did mention that the trade secrets which Clorox would have to disclose must have been developed or maintained in California.

--

Court: United States District Court for the Eastern District of Wisconsin
Opinion Date: 6/9/09
Cite: The Clorox Co. v. S.C. Johnson & Son, Inc., 627 F. Supp. 2d 954 (E.D. Wisc. 2009)
Favors: Employee
Law: California

Intellectual Laziness Threatens Most Liquidated Damages Clauses (Coffman v. Olson & Co.)

Two summers ago, I authored an article in the Illinois Bar Journal concerning liquidated damages provisions in non-compete agreements. My research at the time revealed that most provisions which courts voided as an impermissible penalty were the product of sloppy lawyering.

The black-letter law concerning liquidated - or agreed - damages clauses is fairly consistent from state to state. Actual damages must be difficult to calculate, and the fixed damages must be a reasonable forecast of the damages likely to occur. Failure to satisfy both conditions means the clause is an unenforceable penalty.

The exercise in drafting an enforceable liquidated damages clause is not rigorous, nor should it be. But judging by some of the clauses that end up getting litigated, one would think writing a legally compliant liquidated damages provision is a herculean challenge.

In Coffman v. Olson & Co., the Court of Appeals of Indiana found a liquidated damages clause in a non-compete agreement to be an unenforceable penalty. The case generally involved an accountant who breached a client non-solicitation provision in his employment agreement. That agreement contained a liquidated damages clause requiring the employee to pay the employer as fixed damages the sum of two times the previous year's billings for any client taken in violation of the non-compete. For some unknown reason, the clause trebled the amount if the employee failed to notify his ex-employer of the breach.

The court had little trouble in finding the clause was an unenforceable penalty. The reason: the shotgun clause increasing the damages from two times gross revenues to three times gross revenues bore absolutely no relationship to actual damages and was intended strictly to penalize the employee for a breach.

This is a common, though still inexcusable, mistake, and it's either the product of overlawyering or underlawyering a contract. Interestingly, the court cited a number of past Indiana cases where liquidated damages clauses were void when the fixed sum of damages did not vary with the type of breach. For instance, if the same damages penalty applies to both a breach of a client non-solicitation provision and a provision requiring an ex-employee not to contact former co-workers (clearly a less severe breach), then the clause is inherently punitive, not to mention nonsensical.

In my practice, I frequently review or litigate liquidated damages clauses where this problem occurs. The clause will relate to any breach of post-employment covenants, but will make no distinction between the type of breach. I have seen a capitalization of revenue clause similar to that in Coffman, which was intended to redress an improper client solicitation, apply with equal (and still quite unconvincing) force to a non-disparagement or non-disclosure covenant. Invariably, they defy logic.

Attorneys don't need to invest a lot of time to get this right, but few do. The result is that many types of liquidated damages clauses get thrown out.

--

Court: Court of Appeals of Indiana
Opinion Date: 5/18/09
Cite: Coffman v. Olson & Co., P.C., 906 N.E. 2d 201 (Ind. App. Ct. 2009)
Favors: Employee
Law: Indiana

Lack of Key Non-Compete Can Hurt Secured Creditors In Chapter 11 Valuation (In re Olio Dental)

In a Chapter 11 proceeding, a secured creditor may file a proof of claim valuing the business well above what the debtor believes is accurate. If the debtor intends to carry on the business in the normal course, the court must not look to liquidation value of the business' assets, but rather must examine the use value or fair market value of secured property.

In a recent bankruptcy case involving dental equipment business, HSBC took a security interest in the debtor's "general intangibles of every kind." When assessing the debtor's objection to the proof of claim it filed, the bankruptcy court noted that "the valuation must take into account the value of the business going forward."

However, the debtor's principal had no employment or non-compete agreement, and in the words of the court, "could walk away from this practice and open a new business across the street taking many of debtor's customers with him." Accordingly, the court had to examine fair market value considering the absence of any non-compete binding the debtor's principal.

The result: HSBC's proof of claim estimated the value of its collateral between $375,000 and $500,000. The court valued the secured collateral at just over $100,000 and held HSBC was unsecured as to the balance of its claim.

--

Court: United States Bankruptcy Court for the Southern District of Indiana
Opinion Date: 5/26/09
Cite: In re Olio Dental, Inc., 2009 Bankr. LEXIS 1248 (S.D. Ind. May 26, 2009)
Favors: N/A
Law: Federal

Proving Inevitable Disclosure No Easy Task Against Salesmen (American Airlines v. Imhof)

The "inevitable disclosure" theory is by no means a panacea. In my opinion, it is more a tactic than a theory. For those unfamiliar, the doctrine serves a proxy for the term "misappropriation" in a trade secrets case. Put differently, instead of proving that a defendant misappropriated a trade secret - which are the basic elements of the case - a plaintiff need only establish that it's inevitable he or she will do so.

Because application of the document can be tantamount to an implied non-compete, courts are understandably reluctant to apply it with any force.

Last year's dispute between IBM and Mark Papermaster was somewhat of an anomaly, and people forget Papermaster had a non-compete. The case wasn't just about inevitable disclosure. The doctrine helped aid enforcement of the agreement. The tougher cases involve employees who have no non-compete agreement, but who arguably have access to trade secret information.

Another New York case provides 2009's most significant inevitable disclosure case to date, and it yields another employee-friendly result. The case involved the resignation of Charles F. Imhof, a senior-ranking employee of American Airlines' New York Sales Division, who depared and left for Delta Airlines in a very similar capacity. Imhof had no governing non-compete agreement with American.

Not long before Imhof quit American, he e-mailed to a family account certain corporate documents, one of which was a 2008 sales presentation on Power Point. He also bought a personal digital assistant and transferred some of his business contacts to a personal hand-held device. Imhof's departure was, initially, far from acrimonious - even when he disclosed where he was going. However, when American found out he e-mailed himself business information, it made a demand to Delta that Imhof cease working altogether.

At this point, Delta did what most sophisticated entities are doing now in the face of such demands. It conducted a litigation trade secrets audit, which included the following:

(a) immediately disclaim any need for Imhof's American Airlines documents;
(b) facilitate destruction or complete return of the same; and
(c) conduct a thorough inspection of any digital medium to confirm no traces of the information.

Ultimately, those steps - along with the fact Imhof did not appear to have sent anything to Delta - ruined American's chances to succeed on the inevitable disclosure doctrine.

District Judge Kaplan issued an interesting, thorough opinion. Of particular interest were the following comments:

(1) He found Imhof was not a threat to disclose any corporate information of American because Delta demonstrated no interest in anything and because the litigation itself obviously was a strong deterrent from doing anything suspicious in the future;

(2) Though Imhof did copy and send to himself a few documents, he did not copy a lot, which suggested a less-than-nefarious intent;

(3) Imhof was a sales manager - albeit a highly positioned one - not, in the words of the court, a "food chemist privy to the secret formula for Coca-Cola. The document upon which American relied was a 2008 sales presentation that contained rote talking points about how good the company was or what ends it sought to achieve (which, presumably, someone in sales would want known to others).

The last point is, in my opinion, most important because the theory of inevitable disclosure as applied to salesmen is considerably more abstruse. Access to "sales strategies" or "customer information", for instance, may sound interesting in theory, but it's tough to apply and define as a trade secret.

Sales operational information tends to become stale quickly and may be widely known or publicly available (as was the case with Imhof). Furthermore, it's highly general. The following key passage from Judge Kaplan's opinion elucidates this point rather powerfully:

"The lack of detailed information concerning what Mr. Imhof allegedly knows and why it is both confidential and important means that American essentially asks me to accept the word of those of its personnel who have described these matters in the most general of terms for the proposition that the details, whatever they may be, in fact would be harmful to American if used against it by Mr. Imhof at Delta. But, at the risk of banality, the devil is in the details. Without them, it is extremely difficult for me to know exactly what information American fears that Mr. Imhof inevitably would retain in his memory..."

--

Court: United States District Court for the Southern District of New York
Opinion Date: 6/3/09
Cite: American Airlines, Inc. v. Imhof, 2009 U.S. Dist. LEXIS 46750 (S.D.N.Y. June 3, 2009)
Favors: Employee
Law: New York

Meaning of "Solicitation" Strictly Construed In Favor of Employee (Resource Associates v. Maberry)

Customer non-solicitation covenants tend to be the most commonly enforced restraints of trade. The general rule is that this type of activity restraint is narrowly tailored to prevent an employee from capitalizing on her ex-employer's client goodwill, while still allowing that employee to ply her trade.

Still, non-solicitation covenants are restraints of trade and will be strictly construed against the employer. One issue that often arises concerns the meaning of the term "solicitation." Generally, courts will examine the employee's intent in contacting a client to determine whether a solicitation has in fact occurred. Employees frequently claim that the client approached them first, and that no solicitation occurred.

That was the issue in Resource Associates v. Maberry, and the court held that a non-solicitation clause which only prohibited the employee from "approaching" customers of the business did not include passive acceptance of work when those clients sought out the employee. Of particular importance to the court was the fact that the following paragraph - an employee no-hire clause - used broader terms such as "solictation" and "enticement." These terms may be synonymous, but the court found that the intent of the client non-solicitation covenant was quite limited.

Attorneys drafting non-solicitation clauses for business clients can easily avoid a problem like this and provide that an employee cannot "solicit, contact, take away, or accept business from" a defined list of the employer's clients.

--

Court: United States District Court for the District of New Mexico
Opinion Date: 4/23/09
Cite: Resource Associates Grant Writing and Evaluation Services, LLC v. Maberry, 2009 U. S. Dist. LEXIS 45666 (D.N.M. Apr. 23, 2009)
Favors: Employee
Law: New Mexico

Grant of Stock Options Not Sufficient Consideration for Non-Compete Agreement (Marsh USA v. Cook)

The best way to predict the outcome of a Texas non-compete dispute is to take every instinct you have as an attorney and do the opposite.

Texas is notoriously employer-friendly, and courts hand out injunctions like garage band flyers. But the Texas Supreme Court has interpreted one aspect of the Covenants Not to Compete Act fairly narrowly. That provision requires a covenant to be ancillary to an otherwise enforceable agreement. The Court has interpreted that phrase to mean that the covenant must "give rise to the employer's interest in restraining the employee from competing." Generally, employers are able to satisfy this requirement by agreeing to provide employees with confidential or proprietary business information. According to Texas courts, this is intrinsically related to the restraint, because the covenant protects potential use or disclosure of confidential information.

The odd part of this rule, however, is that financial consideration does not "give rise to" the interest in preventing competition. In Marsh USA v. Cook, the Court of Appeals held that an employer's covenant not to compete was invalid when the employee's consideration was a grant of stock options.

Most states would hold the opposite - that financial consideration is indeed valuable enough to support a non-compete. Even employee-friendly states such as Illinois would not invalidate a covenant on grounds of inadequate consideration if the employee was given stock options. In fact, giving an employee an equity stake in exchange for a non-compete is generally viewed as far less problematic when assessing the reasonableness of the covenant.

But, alas, Texas goes its own way again. At least we haven't heard all that secession talk of late.

--

Court: Court of Appeals of Texas, Fifth District, Dallas
Opinion Date: 5/26/09
Cite: Marsh USA, Inc. v. Cook, 287 S.W.3d 378 (Tex. Ct. App. 2009)
Favors: Employee
Law: Texas

Stored Communications Act Playing Big Role In Competition Cases (Pure Power Boot Camp v. Warrier Fitness Boot Camp)

Back in March, I wrote an article focusing on a bizarre employment dispute between Bonnie Van Alstyne and her former employer, Electronic Scriptorium. Broadly speaking, Van Alstyne's former boss fired her and then accessed her personal AOL e-mail on numerous occasions. This conduct resulted in a federal claim brought by Van Alstyne under the Stored Communications Act, 18 U.S.C. 18 U.S.C. 2707, for which punitive damges and attorneys' fees are available.

What does all this have to do with non-compete cases? My experience shows that a substantial percentage of the relevant evidence in non-compete cases involves e-mail. Often times, this e-mail is generated, sent and stored on employees' personal accounts as they develop their departure and competitive plans. The rub lies in the fact many employees also access their e-mail from time to time at work. Depending on the particular internet settings established, the work computer may store web-based e-mail usernames and passwords. If these are not removed prior to an employee's departure from the company, he or she may be unknowingly providing the ex-employer with the tools to access private e-mail accounts.

This, in fact, is what happened to Bonnie Van Alstyne. It also happened to Alexander Fell, who planned to leaving his job at a fitness company to start his own. When Fell resigned, his boss - Lauren Brenner - was able to access a Hotmail account Fell had logged onto while at work. She was further able to obtain access to Fell's gmail account, and a separate account set up under Fell's new company's name. Brenner then found damaging evidence related to Fell's pre-departure activities.

We can expect scenarios like this to happen with increasing frequency. Brenner's conduct violated the Stored Communications Act and severely damaged her ability to pursue Fell for unfair competition. Though it is not clear whether Fell has since countersued Brenner under the SCA, he may have an independent claim to attorneys' fees and punitive damages even if he is liable to her for unfair competition. To add further insult to Brenner's (self-inflicted) injury, the damaging e-mails she obtained in violation of federal law cannot be used against Fell, unless he opens the door to them or unless they are used solely for impeachment purposes. The harsh reality is that Brenner would have been able to obtain these in the normal course of discovery from Fell or anyone who communicate with Fell - business partners, clients, vendors and the like.

Even internet or e-mail policies may not give an employer a basis to access personal e-mail accounts used during work hours. As the court in Fell's case noted, employees still have a reasonable expectation of privacy to their personal accounts. One important caveat should be noted, here, though. The court was not addressing a situation where Fell drafted and disseminated the e-mails while using his ex-employer's computer, network and server. Presumably, evidence obtained from the server itself or hard-drive would pose problems. But it seems that a court would still be very hesitant to bless any access of a personal e-mail account on this basis alone.

Employers can wade into dangerous territory by being overly aggressive in searching employee's computers. When dealing with personal e-mail accounts, it is best to obtain only what is available from the company's network and rely on the discovery process to glean relevant facts.

--

Court: United States District Court for the Southern District of New York
Opinion Date: 8/22/08
Cite: Pure Power Boot Camp, Inc. v. Warrior Fitness Boot Camp, LLC, 587 F. Supp. 2d 548 (S.D.N.Y. 2008)
Favors: Employee
Law: Federal

Don't Mess With Texas (Courtroom Sciences v. Andrews)

In a relatively short amount of time, Texas went from a state where an employer virtually never was able to enforce a non-compete agreement against a departed at-will employee, to one where there seems to be a presumption that such a non-compete will be enforced. All this despite no legislative interference.

The case of Courtroom Sciences v. Andrews breaks no new legal ground, though it may be the first reported case to follow the predictable decision from the Texas Supreme Court in Mann Frankfort, about which I wrote some time ago. The beauty of this case is its non-sensical, sub-Three Stooges analysis - something all too familiar to lawyers who follow Texas non-compete cases.

Andrews, who worked in jury consultancy and trial services out of Chicago for CSI, signed an employment agreement with an array of restrictive covenants. They weren't terribly drafted, which meant she had no chance of winning. Essentially, they prohibited her from disclosing a range of confidential business information, soliciting CSI clients with whom she had a relationship, interfering with employee relationships, and working nationwide for a trial sciences consultancy firm. Other than the confidentiality restriction, the covenants lasted two years.

The court's analysis about the level of Andrews' violation of her agreement when she left abruptly to join DecisionQuest is predictably thin. It seemed to focus on her failure to return certain corporate information - not really defined at all - to CSI within 24 hours of her departure. It also seemed to suggest CSI lost business, though it's not clear Andrews solicited any clients to leave or if they just left CSI as a result of Andrews' resignation. The court didn't bother to give us that rather helpful bit of information.

Here's the richest part of this case, though. The court itself acknowledged that Texas law requires courts to modify covenants if they are unreasonable or overbroad in any respect. The court further discussed at length CSI's nationwide practice and how it would be unfair or illogical to put a geographic parameter on the non-compete. Then, despite enforcing the other activity covenants in the agreement, the court ignored the non-compete clause and did not restrain DecisionQuest from employing Andrews. Instead, it prohibited her from performing work for CSI clients through trial (in essence, what the non-solicitation clause barred), disclosing certain information unique to CSI, and soliciting employees of CSI (despite the absence of any evidence this actually took place).

So the end result of the non-compete clause was that it was not enforced despite the court's recognition that the law compelled enforcement.

Of all the inane and stupid commentary throughout the decision, however, the real head-scratcher comes in the "analysis" regarding Andrews' breach of her fiduciary duty as an employee of CSI. In citing the evidence supporting a finding in plaintiff's favor, the court actually had the temerity (or ignorance) to cite this fact: "[Andrews] obtained a 'fail-safe' contract insuring her income regardless of the result of this anticipated litigation."

Supposedly now, in Texas, it is a breach of fiduciary duty for an employee to negotiate a favorable contract with a new employer. I would argue this seems a bit ridiculous, but we've come to expect that from Texas courts.

--

Court: United States District Court for the Northern District of Texas
Opinion Date: 5/11/09
Cite: Courtoom Sciences, Inc. v. Andrews, 2009 U.S. Dist. LEXIS 39917 (N.D. Tex. May 11, 2009)
Favors: Employer
Law: Texas

Royalty Injunction Not Appropriate for Knowing Misappropriation of Trade Secrets (Progressive Products v. Swartz)

The Court of Appeals of Kansas recently rendered an opinion on a somewhat obscure issue of law under the Uniform Trade Secrets Act. The question involved application of a royalty injunction, under which a party found to have misappropriated trade secrets can still utilize them as long as a reasonable royalty is paid to the non-infringing party.

The case arose out of a fairly typical departing employee fact pattern. Progressive Products is engaged in the manufacture and sale of Ceram-Back, a ceramic coating for pipe elbows that lengthens the life of a pipe. Several employees left to form a competitor which manufactured the identical product under a different name. The evidence adduced at trial indicated the defendants took the formula for Ceram-Back, its mixing process, a pricing method related to the sale of Ceram-Back, price lists, and customer lists. The court of appeals was unwilling to overrule the trial court's factual determination that the information taken constituted trade secrets and that Progressive Products demonstrated misappropriation under the uniform act.

The tougher issue concerned the remedy. The trial court did not award Progressive Products any damages and refused to issue a prohibitory injunction against the defendants. Instead, it issued a royalty injunction, which conditioned the defendants' future use of the trade secrets on payment of a 20 percent royalty to Progressive Products for three years.

This remedy is found in the uniform act, which varies slightly from state to state. The court of appeals reversed this aspect of the judgment and remanded for the trial court to determine the extent of a prohibitory injunction. In Kansas, the trade secrets law allows for a royalty injunction to issue under "exceptional circumstances." That has been interpreted to include either: (a) an overriding public interest; or (b) acquisition of a trade secret in good faith, with prejudice resulting to the innocent misappropriator should a prohibitory injunction issue.

In this case, the court found the defendants could not qualify as innocent misappropriators. It disagreed with the trial court's rationale that a royalty injunction was appropriate given the interest in competition, Progressive Products' culpability in failing to protect its secrets, and the need for some trade secret protection. As a matter of law, the trial court's rationale failed to meet the applicable standard.

Had the defendants acquired the formulas and other product information innocently or in good faith, perhaps from a party who had misappropriated them, a royalty injunction might have been appropriate. But it was not in a situation involving knowing misappropriation.

In Illinois, the uniform act is not as broad and only permits a royalty injunction to issue when there is an "overriding public interest."

--

Court: Court of Appeals of Kansas
Opinion Date: 4/17/09
Cite: Progressive Products, Inc. v. Swartz, 2009 Kan. App. LEXIS 167 (Kan. Ct. App. Apr. 17, 2009)
Favors: Employer
Law: Kansas