For those of you interested in the inevitable disclosure doctrine and the ability to enjoin a former employee from accepting employment with a new company under the Uniform Trade Secrets Act, don’t miss the Third Circuit’s lengthy opinion in Bimbo v. Botticelli, in which it affirms the lower court’s decision to enjoin an executive from jumping from Bimbo Bakeries to its competitor, Hostess, because of the likelihood that he would disclose Bimbo’s trade secrets in his new position.  

And you can add this to your list of really pathetic explanations for incriminating conduct:  “Botticella admitted to copying [highly confidential and sensitive] files periodically from his laptop to external devices during his final weeks at Bimbo, but maintained that he had done so only to practice his computer skills in preparation for his new position at Hostess.”  Right.

Madeleine Baran at Minnesota Public Radio has an interesting story about the use of non-competes in the health care profession.  (Disclosure: I was interviewed for the piece).  A mother has two children with severe mental health problems.  For the past year, her 8-year-old and 10-year-old daughters had been receiving services from a mental health worker who helped the girls learn how to adjust to school and reduce behaviors like bedwetting and self-injury. After years of chaos and struggle, the mother believed that her children had finally found an adult they could trust.

But two months ago, the family’s mental health worker changed employers.  Because she had signed a non-compete agreement with the agency she was leaving, she was not allowed to continue seeing any of her clients for one year.  The agency that she left would not allow an exception for the two children.

Non-compete agreements are commonly used – and enforced - in the health care profession in Minnesota.  In some states, courts have refused to enforce them on public policy grounds; i.e. patients should be able to chose their health care provider.  That issue has not been resolved yet here in Minnesota, though. 

Perhaps medicine is really just a business like any other?

Here is a link to a good article by two lawyers from Atlanta, Benjamin Flink and Anne Andrews, on how to protect your confidential information and customer relationships in this age of data mobility.  While it mostly focuses on Georgia law, the article provides some good practical suggestions/reminders, including using confidentiality agreements with employees; instituting good computer use policies; restricting access to sensitive information; conducting inventories for departing employees; and instituting remote access policies.

I will be speaking on this exact topic with Gary Eidelman from Saul Ewing in Baltimore at the Upper Midwest Employment Law Institute next Monday.  Come and learn more!

First, some background.   Astro-Med and Nihon Kohden are rivals in the highly competitive life sciences equipment market.  In October 2006, Nihon Kohden hired away Kevin Plant, a valuable Astro-Med employee. When first hired at Astro-Med in 2002, Plant signed an employee agreement that contained non-competition and non-disclosure provisions. Relying in large part on those provisions, in December 2006, Astro-Med filed suit against Plant alleging breach of contract and misappropriation of trade secrets. Astro-Med later added a third claim of unfair competition against Plant and joined Nihon Kohden as a defendant, against whom it alleged claims of tortious interference and misappropriation of trade secrets.

In April 7, 2008, a jury returned a verdict against Nihon Kohden and Plant,  awarding $375,800 in damages in favor of Astro-Med. Following the verdict, on July 25, 2008, the district court awarded exemplary damages against Nihon Kohden and Plant in the amount of $560,000, added an award of attorney’s fees and costs, and imposed a sanction pursuant to Federal Rule of Civil Procedure 37. All told, the judgment against Nihon Kohden and Plant equals $1,159,823.60.  Nihon Kohden and Plant appealed, but the Court of Appeals rejected their arguments and upheld the jury verdict.

There are, from my point of view, two interesting holdings in this case.  The first is that the Court was willing to enforce Astro-Med’s non-competition agreement even after finding that its territorial restriction (which was basically the entire world) was overbroad.  In other words, the court used the “blue pencil” doctrine to judicially revise the non-compete and make it enforceable.

The second interesting point is the inherent burden the defendants in these types of cases sometimes face.   The jury apparently concluded that the reason Nihon Kohden hired Plant was to obtain access to his intimate knowledge of Astro-Med’s business.  “It is a logical inference that a competitor who hires away a rival’s valued employee with access to inside information has done so in order to use that inside information to compete with the rival, and it is an equally logical inference that once Plant became a Nihon Kohden employee, he sought to justify its hiring decision by revealing and using the information Nihon Kohden had bargained for.”

On appeal, Plant argued that he had not misappropriated any trade secrets because Nihon Kohden never used any of them.  The Court held that  misappropriation includes disclosure of a trade secret by one who acquired it while under a duty to maintain its secrecy and the acquisition of a trade secret by one who knows that it was acquired by breach of a duty to maintain secrecy.   “Contrary to defendants’ assertion, Astro-Med need not have shown that either Plant or Nihon Kohden “used” Astro-Med’s trade secrets; disclosure or acquisition is sufficient to constitute misappropriation.” 

The bottom line is that both courts and juries are willing to conclude that where there is smoke, there is fire.  If a defendant had the means and the motive to misappropriate trade secrets, that will probably be enough to justify a finding of actual misappropriation, and the large damages awards that can flow from that.