Judge Janet L. Sanders of the Superior Court’s Business Litigation Session has continued the trend of Massachusetts courts refusing to recognize the inevitable disclosure doctrine.
In The Gillette Company v. Craig Provost et al, Civ. Action No. 15-0149 (Mass. Sup. Dec. 22, 2015), Gillette moved for a preliminary injunction to prevent its former counsel and ShaveLogic’s current general counsel, Chester Cekala, from providing any legal advice regarding Gillette’s patents, not only with respect to patent validity but also on infringement and scope. Although Cekala’s non-compete agreement with Gillette had long expired, Gillette contended that Cekala’s legal advice inevitably disclosed Gillette’s trade secrets to its competitor given his experience with the company.
In rejecting Gillette’s position, Judge Sanders noted that Massachusetts courts have not “embraced” the doctrine of inevitable disclosure. She wrote that “if the court were to accept Gillette’s logic, Cekala would be effectively prevented from working in any legal position for a competitor in the shaving industry even though his non-competition agreement expired years ago.” Moreover, even if inevitable disclosure had been an acceptable doctrine, Judge Sanders cast skepticism on its applicability given the length of time since Cekala’s employment at Gillette (six years) and the public availability of much of the patent information.
Interestingly, Judge Sanders did not address the inherent ethical problem with Cekala’s non-competition agreement in light of the Massachusetts Rules of Professional Conduct’s ban on non-competition agreements for attorneys. The decision does demonstrate, though, that the inevitable disclosure doctrine likely will be without success in any effort to end-run the prohibition on attorney non-competition agreements.
The decision in Gillette remains in line with Massachusetts courts’ reticence to consider employers’ concerns regarding inevitable disclosures without an active non-compete agreement. In Architext, Inc. v. Kikuchi, No. 0500600, 2005 WL 2864244, at *1 (Mass. Super. May 19, 2005), the Superior Court rejected a preliminary injunction preventing a former employee from employment with a competitor because Massachusetts courts have not adopted the doctrine of inevitable disclosure and the doctrine was inapplicable given the lack of direct competition between the companies and likelihood of inevitable disclosure. The court for the District of Massachusetts did grant a preliminary injunction in Marcam Corp. v. Orchard, 885 F. Supp. 294, 298-300 (D. Mass. 1995), preventing a former employee from joining a competitor in part because “it [was] difficult to conceive how all of the information stored in [the employee’s] memory [could] be set aside as he applie[d] himself to a competitor’s business;” but the employee already was bound by a non-competition agreement.
Given Massachusetts courts’ hesitance to adopt the inevitable disclosure doctrine, the protections afforded by non-competition and non-solicitation agreements remain vital to employers protecting their confidential information.