Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).
Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.
The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.
The Court determined that plaintiff’s alleged harm would be irreparable – the use of plaintiff’s trade secret documents would result in lost sales and clients. Because plaintiff had shown a likelihood of success on the merits and irreparable harm, the Court entered a TRO. The Court ordered defendant and his agents not to use, reference or copy any documents misappropriated from plaintiff, and to return any such documents to plaintiff. The Court also enjoined defendant from soliciting any of plaintiff’s customers or clients whom defendant had contact with during the previous twelve months. And the Court enjoined defendant from soliciting plaintiff’s employees. The Court also ordered defendant to produce forensic copies of any of his personal computers.
But the Court did not enjoin defendant from working for his new employer. The Court noted that a TRO was an extraordinary remedy. And based on the available evidence, the Court was unwilling to use a TRO to end defendant’s employment, even for a limited period.

Continue Reading Court Enjoins Competition, Not Employment

Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs’ right to record new music with producers or record labels of plaintiffs’ choice. The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants. Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively “HH”) — in addition to clicking on “Hawthorne Heights” to go to the band’s website, you can also read about them on Wikipedia. HH entered into a contract (the “Agreement”) with defendants to produce and promote four albums. The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured. HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH. This suit arose from that dispute. Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH’s letter allegedly terminating the Agreement and related state law claims. In a prior opinion (discussed in the Blog’s archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement. Based upon the Court’s ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH’s efforts to record new music with a third party. Defendants cross-moved to prevent HH from working with anyone but defendants. The Court held that HH showed a likelihood of success on the merits based upon the Court’s prior ruling that the Agreement was not exclusive. Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling. Because defendants had no likelihood of success, their motion for a PI was denied. Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.
The Court found that HH would suffer irreparable harm without an injunction. The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction. The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants “within a reasonable time.”

Continue Reading Band Granted a Preliminary Injunction Allowing Choice of Producers

SMC Corp., Ltd. v. Lockjaw, LLC, __ F. Supp.2d __, 2007 WL 983850 (N.D. Ill. Apr. 3, 2007) (Castillo, J.).

Judge Castillo granted plaintiff’s motion for a preliminary injunction, enjoining defendants from breaching the parties’ agreement, unless plaintiff acted in a manner triggering the agreement’s termination provision, and from contacting plaintiff’s customers for any purpose without plaintiff’s consent.  Plaintiff was the exclusive distributor of defendants’ patented Lockjaw pliers in certain Western European countries.  For about eighteen months, plaintiff’s distributed defendants’ pliers without incident.  But then defendants altered payment terms, which was their right if they followed certain procedures.  Plaintiff alleges that defendants did not follow those procedures and based on this dispute the relationship appears to have broken down.  Shortly after defendants altered the payment terms, plaintiff filed this suit seeking, among other things, a declaratory judgment that the agreement is binding and enforceable, and that defendants breached the agreement.  Plaintiff also sought an injunction to prevent the defendants from terminating the agreement and/or contacting plaintiff’s customers.  Relying upon the UCC, the Court found that plaintiff had a likelihood of success on the merits based upon, among other things, the fact that its brief (and cured) nonpayment for two shipments likely did not constitute a breach of the agreement.

Continue Reading Harm to Goodwill is Potentially Irreparable, Justifying Preliminary Injunction