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From Intellectual Property Law Daily, March 1, 2019

Packing supply company obtains ex parte TRO against former employee

By Cheryl Beise, J.D.

A technical service representative was enjoined from possessing, using, or disclosing any trade secret information obtained from his former employer.

The federal district court in Sacramento has granted packaging supplier Bemis Company an ex parte temporary restraining order against a former technical service representative who allegedly downloaded trade secret and confidential information before beginning new employment with a Bemis competitor. Bemis alleged sufficient facts to establish a likelihood of success on its trade secret and breach of contract claims and irreparable harm from lost business and goodwill. A forensic exam of the former employee’s work computer showed that he downloaded a large number of company documents, including customer data, prior to his departure (Bemis Company, Inc. v. Summers, February 28, 2019, Nunley, T.).

Bemis Company, Inc., is a supplier of packaging solutions and products. Bradley Summers previously worked for Bemis as a technical service representative responsible for performing customer audits and film trials, requiring gathering of confidential data about Bemis’s products. Bradley signed a confidentiality and non-disclosure agreements.

Bemis alleged that in December 2018, while still employed by Bemis, Summers accepted a new position with a competing firm, Winpak. Summers resigned from Bemis on January 2, 2019, purportedly to enter a new field of work. After discovering that Summers was working for Winpak, Bemis conducted a forensic exam of Summer’s work computer and discovered that Summers copied a large number of documents, many of them confidential, proprietary, and trade secret, onto an external storage device. On February 26, 2019, Bemis filed suit against Summers, alleging breach of contract and violations of the Defend Trade Secrets Act (DTSA) of 2016 and the California Uniform Trade Secrets Act (CUTSA). Bemis also filed an ex partemotion for a temporary restraining order (TRO) and order to show cause why a preliminary injunction should not issue.

The court explained that in order for Bemis to succeed on its motion, it had to satisfy all four elements of the test articulated in Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 22 (2008), considering (1) the likelihood of success on the merits; (2) the presence of irreparable harm absent injunctive relief; (3) the balance of equities; and (4) the public interest.

The court found that Bemis alleged sufficient facts to meet its burden of proving it was likely to succeed on the merits all three claims. Bemis asserted ownership of a trade secret, and based on the evidence submitted, it appeared "more than likely Defendant acquired this trade secret, and that Defendant’s use of the trade secret will damage Plaintiff by causing Plaintiff loss of business, business advantage, and good will," the court said. Summers also entered into presumably valid agreements in which he agreed to refrain from disclosing any of Bemis’s trade secrets and other confidential material.

The court also found that Bemis sufficiently alleged irreparable injury arising from lost business, and loss of business advantage and goodwill, which cannot be repaired with a monetary award. The balance of equities favored issuance of the TRO because its only effect was to preserve the status quo. A TRO protecting trade secrets also was in the public interest.

Summers was enjoined from possessing, using, or disclosing any of the materials taken from Bemis’s system, and any other property of Bemis that came into his possession via external hard drive download, e-mail attachment, or other medium. Summers was ordered to return anything obtained from Bemis and to provide an accounting within 30 days. The court also ordered an inspection of Summer’s personal and work email, servers, hard drives, computer(s), mobile devices, PDAs, USB drives, solid state drives, flash drives cloud storage locations, and other electronic equipment or databases maintained by Summers including any hosted equipment, by a neutral forensic expert mutually agreed upon by the parties to ascertain whether any of Bemis’s trade secrets, including its customer data, exists on such devices. Bemis also was ordered to preserve all relevant documents.

The case is No. 2:19-cv-00344-TLN-KJN.

Attorneys: Jason Phillip Brown (Ogletree Deakins Nash Smoak & Stewart, PC) for Bemis Company, Inc.

Companies: Bemis Company, Inc.

MainStory: TopStory TradeSecrets CaliforniaNews

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