In a recent decision involving whether a former employer could obtain a temporary restraining order under its broad non-competition agreement with its former employees and former software development company, the federal court in Richmond Technologies, Inc. v. Aumtech Business Solutions, No. 11–CV–02460–LHK, 2011 WL 2607158 (N.D.Cal. July 1, 2011) granted plaintiff’s request and enjoined defendants from competing with plaintiff while using its proprietary information. The court attempted to balance plaintiff’s property interests in its confidential data and business reputation against California’s long held public policy against noncompetition agreements. Ultimately, the court held there was sufficient evidence of defendant’s alleged wrongdoing to justify a TRO.
The Richmond court effectively “blue penciled,” or reformed, plaintiff’s broad non-compete agreement, rolling back its provisions to conform with California’s “trade secret exception” to California’s statutory bar on employee non-competes. Such blue penciling is arguably inconsistent with several recent California state court decisions prohibiting such reformation of overbroad noncompetes. In the end, the case highlights the difficulty in applying a trade secret exception to Business and Professions Code section 16600 and determining whether sued-upon noncompete covenants are necessary to protect an employer’s trade secrets.
Plaintiff’s Allegations in Richmond Technologies
The plaintiff in Richmond was a distributor of enterprise planning software. Plaintiff sued defendants, which were plaintiff’s source-code company and plaintiff’s former employees, for misusing plaintiff’s source code and proprietary customer data to unfairly compete with plaintiff, before and after defendants terminated their relationships with plaintiff. In doing so, defendants (plaintiff alleged) breached their noncompete, non-solicitation, and non-disclosure agreements with plaintiff, violated California’s unfair competition statute, and were liable under other related common law theories. Notably, plaintiff did not make a claim for trade secret misappropriation under California’s Uniform Trade Secret Act (Cal. Civ. Code § 3426.1 et seq.).
. The noncompete agreement prohibited defendants from competing with plaintiff for one year after their relationships terminated, and the non-solicitation agreements prohibited defendants from soliciting plaintiff’s customers during defendants’ employment and for one year thereafter. There appeared to be no significant difference in the broad application of the non-solicitation and noncompete agreements; in fact, the non-solicitation agreements, which contained certain exceptions regarding time lapse and the employees pre-existing relationship with the customer, were narrower than the noncompete. The non-disclosure agreement prohibited defendants from using plaintiff’s proprietary data.
The Court’s Decision
Even though the court denied an injunction based on plaintiff’s non-solicitation agreements because they were overbroad and likely unenforceable under California’s statutory bar against restrictive covenants (Cal. Bus. & Prof. Code § 16600), the court issued a limited injunction based on the non-competition agreement. The court noted and discussed at some length the “trade secret exception” under Section 16600, which, despite California’s strong public policy against non-competition agreements, permitted claims for breach of noncompete agreements if necessary to protect a trade secret. Retirement Group v. Galante, 176 Cal.App.4th 1226, 1237, 98 Cal.Rptr.3d 585 (Cal.Ct.App.2009) and Edwards v. Arthur Andersen LLP, 44 Cal.4th 937, 81 Cal.Rptr.3d 282, 189 P.3d 285 (2008). Plaintiff presented sufficient evidence, the court found, that:
- defendants had access to Richmond’s customers’ specialized requirements;
- defendants set up their competing business almost a year prior to terminating relationship with plaintiff;
- prior to terminating, defendants stopped using their Richmond e-mail accounts to communicate with plaintiff’s customer, and instead began using their Aumtech e-mail accounts;
- defendants listed plaintiff’s customers on Aumtech’s website as Aumtech customers;
- defendants contacted specific plaintiff customers and induced them to switch to defendants; and
- one of the individual defendants, prior to resigning from plaintiff, wiped her Richmond computer using three wiping programs, thus forever deleting many customer files and e-mails that Richmond needed to carry on its business with those customers.
In light of this evidence, the court found that there were, at a minimum, “serious questions going to the merits” of plaintiff’s claims which justified its TRO.
Nevertheless, to balance plaintiff’s interests against California’s policy against noncompetes, the court “narrowly” drew its injunction, such that defendants were prohibited from:
- holding out plaintiff’s customers on Aumtech’s website as defendants’ customers;
- initiating contact with plaintiff’s customers that defendants knew of or had contact with during their employment with plaintiff (except for broad-based marketing of its products), but defendants were not prohibited from responding to requests initiated by such customers;
- using plaintiff’s proprietary data to negotiate or do business with plaintiff’s customers, but defendants were allowed to do business with those customers so long as defendant’s did not use such plaintiff’s proprietary information; and
- using plaintiff’s source code in their business, but defendants were allowed to market and sell similar products so long as they did not use plaintiff’s trade secrets.
The Court’s Decision and State Court Authority
The court’s findings are arguably inconsistent with recent California state court decisions; however, this is just a decision on the temporary restraining order and not a preliminary injunction. On the one hand, the Richmond court held that plaintiff’s broad non-solicitation agreements were unenforceable under Section 16600 because they were not “narrowly tailored” to protect plaintiff’s trade secrets, even though the agreements contained certain exceptions. Plaintiff’s noncompete agreement, however, was just as broad, if not more so - it provided that, upon defendants’ termination of their relationships with plaintiff and without exception, they “will not compete with [plaintiff] with similar product and or Service using its technology for a period of one year thereafter.” Nevertheless, the court issued the injunction under the noncompete.
In effect, the court blue-penciled or reformed the noncompete to conform to the trade-secret exception under Section 16600. Such blue-penciling has been held impermissible by several California cases, including those which held that employers violate California’s unfair competition statute (Cal. Bus. & Prof. Code § 17200) by even requiring employees to sign overly broad noncompete agreements at the beginning of their employment. See Kolani v. Gluska, 64 Cal.App.4th 402, 407-08 (1998) (holding that trial court properly declined to rewrite illegal covenant not to compete into a narrow bar on theft of confidential information); D’Sa v. Playhut, Inc., 85 Cal.App.4th, 927, 934-35 (2000) (refusing to narrowly construe invalid covenant not to compete so as to make it enforceable); Dowell v. Biosense Webster, Inc., 179 Cal.App.4th 564, 579 (2009).
The takeaways from the Richmond decision are that (1) California courts still struggle with whether there is a trade secret exception to Section 16600 that would permit certain narrow noncompete restrictions; (2) when drafting restrictive covenants, employers should make sure they are tailored to protect against the misuse of trade secrets; (3) employers should monitor employee’s conduct and keep an eye out for unlawful activity (defendants in Richmond allegedly engaged in unlawful activity for almost a year without plaintiff knowing), and (4) when suing a former employee for breach of contract and trade secret theft, recognize that courts will likely impose heavy pleading and proof burdens, and diligently investigate and document alleged misconduct.