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HomeMy WebLinkAbout98-04329 i' ~" . . ~ ~l .I c)' ~. ~I ~ ~ ~ ..I , ~ 'h ~i~ \I .~ ~'\ ~ \ '" \ ~ ' ~ ! ~ ~ -(1 '~i wi ().,: ti !"') ~. " ....j ~{ .~ ";::. ",. .~ use trude secrets misappropriated from the employer. Christonher M's Hand Poured Fud~e v. Hennon, _ Pa. Super. _, _,699 A.2d 1272, 1276 (1997). As the instant matlerdoes not involve a restrictive covenant, Plaintiffs allegations hinge on the existence of trade secrets and a confidential employment relationship or misappropriation of those trude sccrets. A trade secret may consist of any device or compilation of in/ormation used in onc's busincss and which gives him an advantage over competitors who do not know or usc thc information, but docs not includc an cmployce's aptitudc, skill, dexterity, mcntal ability or other subjective knowledge obtained during the course of his employment. Christopher M's, _ Pa. Supcr. at _' 699 A.2d at 1274, 1275. [n detcrmining whether certain information eonstitutcs a trade secret, the court may considcr the following factors: 1. the extent to which the information is known outside the employer's business; 2. the extent to which it is known by employees and others involved in the employer's business; 3. the extent of measures taken by the employer to guard the secrecy of the information; 4. the value of the information to the employer and its competitors; 5. the amount of effort or money expended by the owner in developing the information; and 6. the ease or difficulty with which the information could be properly acquired or duplicated by others. Christopher M's, _ Pa. Super. at _,699 A.2d at 1275. Additionally, in the determination of the existence of a trade secret, competing policy considerations include the right of an employer to be protected against unfair competition resulting from the use of its trade secrets, and the right of the employee to the unhampered pursuit of the livelihood for which he is best suited. Fidelity Fund. Inc. v. DiSanto, 347 Pa. Super. 112, , 500 A.2d 431, 436 (1985). 3 The evidence in the instant matter will establish that the identity of Plaintifl"s customers was not confidential or guarded by Plaintiff Iromthe majority of its employees. Delendant Joseph developed customer contacts and good customer relations through his own efforts during his employ with Defendant, and not through great expensc or efli.lrt on the part of Plaintiff. This "personal" clement, the building of trust and confidence between the agent and the customer, was acknowledged by Plaintiff and Defendants as one of the most important factors in keeping and obtaining business. Identification of potential customers is readily available through other sources include public business directories. All covcrage information is available from thc customer. Defendant Joseph did not misappropriatc Plaintifrs customer information. Pennsylvania courts have held, under similar circumstances, that customer lists do not amount to trade secrets. See, Gilbert v. Otterson, 379 Pa. Super. 481, 550 A.2d 550 (1988)( customer list was not a trade secret where employer did not expend any special work to produce the list); Fidelitv Fund, Inc. v. DiSanto, 347 Pa. Super. 112,500 A,2d 431 (1985)(customers known to employee prior to his employment and those developed by employee during his employment were not trade secrets, nor were insurance policy expiration dates which were readily discoverable by other means). Equity is not to be utilized to protect mere names and addresses easily ascertainable by observation or by reference to directories. Gilbert, 379 Pa. Super. at_, 550 A,2d at 554, citing Wiegand Co. v. Trent Co., 122 F.2d 920 (3d Cir. 1941). Therefore, Defendant Joseph's use of customer contacts and customer relations developed by his own efforts during his employment with Plaintiff, does not amount to a use or disclosure of a trade secret; nor was Defendant Joseph privy to confidential information regarding Plaintiff's customers unknown to other employees, such that he was not under a duty not to disclose this information. Moreover, as the Court correctly addressed at argument, the 4 book of business purchased by Plaintiff is twelve years old, PlaintilThas collectcd twelve years of prcmiums. and Plainti 1'1' has been more than adequately reimbursed as a result of that purchasc. Thosc custumers arc Iree to dcal with any agency they desire, and although Plaintiff had the option to rcstrict Dcfendant Joseph's ability to deal with the customers via a restrictive covcnant, it failed to do so. Therefore. Plaintiff cannot prevail on the mcrits of this allegation. Abscnt a rcstrictivc covenant not to compete, a former employec has the right to compcte with thc former cmployer, including thc right to divert business from that cmploycr. Gilbert, 379 Pa. Supcr. at _, 550 A.2d at 554-555. I I' an cmployec intentionally interfcres with an cxisting contractual relationship, thcn hc is subject to liability for thc breach of the contract. Morgan's Home Equipmcnt Corn. v. Martucci. et aI., 390 Pa. 6 I 8, 136 A.2d 838 (1957). In the instant mattcr, ncither Defendant Joseph nor Defendant Integrity has induced Plaintiffs customers to breach their existing contracts with Plaintiff. Plaintiff also allegcs that both Defendants have induced customers not to renew their policies with Plaintiff. To establish a tortious interference with prospective contractual relations, it is essential that Plaintiff establish that Defendants' conduct was improper and requires a showing of some element of fraud or trade secrecy involvement. Gilbert, 379 Pa. Super. at_, 550 A.2d at 554. Defendants ncither defrauded customers nor, as detailed above, used or disclosed trade secrets. While Defendant Joseph has contact a small number of Plaintiffs customers, he has not used any protected confidential information or trade secret, but has attempted to compete fairly for the customers' business as he is entitled to do. Thus, Defendant Joseph and Defendant Integrity did not tortiously interfere with Plaintiffs contractual relationships. Therefore, Plaintiff cannot prevail on the merits of this case, and this Honorable Court should deny Plaintiffs Motion for a Preliminary Injunction. 5 , Johnson, Duffie, Stewart & Weidner By: Joseph L. Hitchings J.D. No. 65551 301 Market Street P. O. Box 109 Lemoyne, Pennsylvania 17043-0 I 09 (717) 761-4540 " SEP 1 5 J~4f< . ~ Allomeys for Plaintirf INSURANCE & SURETY, INC., Plaintiff IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA NO. 98-4329 v. J. MICHAEL JOSEPH, and INTEGRITY UNDERWRITERS, INC., CIVIL ACTION - EQUITY Defendants TRIAL MEMORANDUM OF PLAINTIFF I. FACTUAL AND PROCEDURAL BACKGROUND A hearing on Plaintiffs request for preliminary injunctive relief was held before your Honor on September 8, 1998. This Brief is being submitted to supplement and support the evidence presented at that hearing. The testimony revealed the Defendant, J. Michael Joseph was employed by Plaintiff, Insurance & Surety, Inc. from July, 1989 until his employment was terminated in January, 1998. Although he was initially hired as an inside sales person, he later became an outside sales person or "producer". As producer, he was given various clients of Insurance & Surety to service and he was also asked to develop new business for the company. Mr. Joseph also served as the computer person for the Plaintiff meaning that he had access to records and information on clients who were serviced by all the other producers in the office. This is information that would not be readily available to the other producers in the office. After having his employment terminated by the Plaintiff, Mr. Joseph began employment with Defendant, Integrity Underwriters, Inc. As an employee of Integrity Underwriters, Mr. Joseph's duties were similar to those he had with Insurance & Surety; including servicing clients of Integrity Underwriters and attempting to bring in new business and accounts. In an attempt to bring in new business to Integrity Underwriters, Mr. Joseph sent letters to clients of Insurance & Surety specifically directed to the contact person at each company advising that he was now employed with Integrity Underwriters and he could help .~. them with any of their Insurance needs. Mr. Joseph during his testimony admitted that he went so far as to contact persons at some of Insurance & Surety clients including the Pennsylvania Bar Institute to ask if he would be permitted to quote insurance prices, which he did. Mr. Joseph admitted that as a result of his position with Insurance & Surety, he was aware of the contact persons at the various companies who were clients of Insurance & Surety, along with information concerning their expiration dates, premium amounts, and any special needs which the clients may have had while being serviced by Insurance & Surety. Although he claims to have only made $200 in commissions from sales to clients of Insurance & Surety, he did testify that it was his intention to continue contacting clients of Insurance & Surety in an attempt to get their business for Integrity Underwriters. James Gould, one of the owners of Insurance & Surety testified that in 1986 they purchased the Berkley-Detweiler Agency client list for two times commission income over a five year period. They only purchased the client lists and expiration dates, no other assets were purchased. Insurance & Surety paid out over the five year period approximately $269,000 for the client list from Berkley-Detweiler. Of note, Mr. Joseph, during his testimony, admitted that he knew several of the clients which he has contacted were in fact purchased from the Berkley-Detweiler Agency. Mr. Gould testified that knowing the expiration dates and the contact persons for the various ctients are critical in his business. He also testified that this is information not readily available through other means. Although there was some testimony that the Pennsylvania Worker's Compensation Bureau has records which can give you a good idea of an expiration date, they do not provide you with a contact person, information on the organizational structure of the companies or give you exact expiration dates or information on other lines of insurance which may have the same expiration period. Although Mr. Gould testified that over the years Insurance & Surety has had a 98% retention rate with it's clients, since Mr. Joseph has left and has been contacting their clients, they have seen their retention rate to drop to 90%. As a result of the actions of Mr. Joseph, Insurance & Surety filed the pending Action with a request for both preliminary and permanent injunctive relief. This Brief is filed in support of Plaintiffs request for a preliminary injunction. 2 'r' II. INJUNCTIVE RELIEF A preliminary injunction will be issued when the following prerequisites are met. First, the issuance is necessary to prevent immediate and irreparable harm incompensable by damages. Second, greater harm would result by refusing to issue the injunction than by granting it. Third, the issuance of the injunction restores the parties to their status existing prior to the wrongful act. John G. Bryant Co. v. Sling Testing & Repair. Inc. 471 Pa. 1,369 A.2d 1164, 1167 (1977). "It is not the initial breach of a convenant which necessarily establishes the existence of irreparable harm. but rather the threat of the unbridled continuation of the violation and the resultant incalculable damage to the former employer's business that constitutes the justification for equitable intervention." Id. ;, The movant in a preliminary injunction proceeding must also demonstrate that it has a reasonable probability of eventual success in the litigation and that the movant will be irrefutably harmed pendente /ite if the injunction is not awarded. Oburn v. Shapo, 521 F.2d 142, 147 (3d Cir. 1975); Perfect Subscription Company v. Kavaler, 427 F.SupP. 1289, 1292 (1977). The trial court has broad discretion to award a preliminary injunction since the decision involves a significant weighing of benefits and burdens that the injunction will have on the public, as well as the parties involved. Pen Galvanizing Company v. Lukens Steel QQ., 468 F.2d 1021, 1023 (3d Cir. 1972). The testimony in the present case establishes the elements necessary for an injunction. The use of priceless client lists and other confidential information including expiration dates, contact persons, and premium amounts, being used to take business away from Insurance & Surety to profit Defendants Joseph and Integrity Underwriters, damage Insurance & Surety incalculably. As Defendant Joseph himself admits, he will continue contacting clients of Insurance & Surety, so there is no way Plaintiff can put a dollar figure on what they will lose should Defendant Joseph be successful in his attempts to steal clients. If, as maintained by the Defendants, the lists and other information are not of great value, than an injunction forbidding contact with clients of Insurance & Surety will not be a burden to the Defendants. Moreover, if this information is so easy to obtain and not of great value, why would insurance agencies such as the Plaintiff pay over $250,000 for this information. Clearly, Plaintiff has met the prerequisites for the issuance of a preliminary injunction. 3 1//. BREACH OF FIDUCIARY DUTY The Defendant J. Michael Joseph worked in the capacity of an agent for Plaintiff Insurance & Surety, the principal. As an agent, Defendant Joseph owed a duty of loyalty to his principal to act only for the principals benefit. Sutliff v. Sutliff. 515 Pa. 393, 528 A.2d 1318 (1987). In fact, the duty of loyalty can extend beyond the employment where the employee gained information which gives them a competitive advantage. Moreover, the Agent must act with the utmost good faith and furthering the interest of the principal. Garbish v. Malvern Federal Savings and Loan Association. 358 Pa. Super. 282, 517 A.2d 547, appeal denied 516 Pa. 641, 533 A.2d 712 (1986). The Pennsylvania Supreme Court in McBeth-Evans Glass Co. v. Schnelbach, 239 Pa. 76, 85-86, 86 A. 688, 691 (1913) stated: The duty of the servant not to disclose the secrets of the master may arise from an express contract, or it may be implied from their confidential relations. It is likewise true that other persons who induce such disclosures by an employee knowing of his contract not to disclose or knowing that the disclosure is in violation of the confidence reposed in him by his employer, will be enjoined from making use of the information so obtained. Where confidence is reposed, and the employee by reason of the confidential information has acquired knowledge of trade secrets, he will not be permitted to make disclosure of these secrets to others to the prejudice of his employer. Citing. Computer Print Systems. Inc. v. ~ 422 A.2d 148, 154-155 (Pa. Super. 1980). In the present case, Defendant Joseph had a confidential relationship with Insurance & Surety. In that confidential relationship, he was exposed to and given access to client information which, if competitors knew, would give them a competitive advantage over Insurance & Surety. When Mr. Joseph's employment with Insurance & Surety ended, he took that information with him and has now used it to his own personal financial advantage as well as the financial advantage of his new employer Integrity Underwriters, Inc. To make matters worse, Defendant Joseph knew that this information was extremely valuable, as he admitted during his testimony that he was aware that Insurance & Surety has purchased these clients from the Berkley-Detweiler Agency for a large sum. 4 IV. UNFAIR COMPETITION A "trade secret" is "any formula, pattern, device or compilation of information which is used in one's business, and which gives that business an opportunity to obtain an advantage over competitors who do not know or use it." International Elections Systems Corp. v. Shoup. 452 F. Supp. 684, 705 (1978); Restatement of Torts 9 757, comment b. An employer requesting equitable relief due to unfair competition against a former employee must show that (1), there was involved a secret manufacturing process or a "trade secret"; (2), the employer valued it and it was important to the business; (3), by reason of discovery or ownership, the employer had the right to use and enjoy the secret; and (4), the employer communicated the secret to the employee who was employed in a position of trust and confidence in a situation were it would be inequitable for the employee to disseminate the secret to others prejudicing his former employer. Van Products Co. v. General Welding & Fabricating Co.. 419 Pa. 248, 259, 213 A.2d 769 (1965). Of critical importance, customer lists in several instances, have been held to be trade secrets as long as they are retained in secrecy. International Election Systems. Corp. v. Shoup. 452 F. Supp. at 706; West Mountain Poult'Y Co., v. Gress. 309 Pa. Super. 361,455 A.2d 651 (1982). The testimony in the present case clearly establishes that information garnered and used by Defendant Joseph is kept in secrecy. In fact, Mr. Gould testified that only Defendant Joseph in his position as computer person and the company owners, had ready access to the computer listing of all the clients and pertinent information, relating to the clients of Insurance & Surety. No other producer had ready access to this information, unless they were to go through each and every file, which would be an extremely cumbersome and time consuming process and which would clearly draw attention to the person and raise eyebrows with regard to their motives. The United States District Court for the Eastern District of Pennsylvania in the International Elections Systems Corp. supra case adopted a six factor test to be considered in determining whether a certain product andlor information is a trade secret: 1. The extent to which the information is known outside of the owners business; 2. The extent to which it is known by employees and others involved in the owners business; 3. The extent of measures taken by the owner to guard the secrecy of the information; 4. The value of the information to the owner and to his competitors; 5. The amount of effort or money spent by the owner in developing the information; 6. The ease or difficulty with which the information could be properly acquired or duplicated by others. Restatement of Torts 9 757, Comment b. 5 The customer list and information in the present case is quite distinguishable from those found not to be trade secrets for milk or steel salesman and the like. Compare, Colleryahn Dairy v. Snyder Dairy, 415 Pa. 276, 203 A.2d 469 (1964); Spring Steels. Inc. v. Molloy, 400 Pa. 354, 162 A.2d. 370 (1960). The clients In this case purchased insurance from Insurance & Surety. Insurance & Surety's knowledge of their clients, their particular needs, the structure of their business, their expiration dates, premium amounts, and the relationships developed with those clients, is an insurance agency's stock in trade. The client list and information purportedly used by the Defendants are not lists of businesses that purchased insurance. Admittedly, most every business purchases some type of insurance. However, in this case we are talking about contact information, premium amounts, expiration dates, and the business relationship established with the client is of critical importance. No other insurance agency has Insurance & Surety's compilation of clients and the information associated with each client, or the knowledge of the business relationship that has developed over the years. This confidential information of the clients of Insurance & Surety is not widely known, and cannot be easily compiled from any other source. As stated previously, if this information could be easily compiled, insurance agencies would not spend the sums they do to purchase clients from other agencies. In this case alone, Insurance & Surety paid approximately $269,000 for the clients of the Berkley Detweiler Agency. With regard to the test laid out in the International Election Systems Corp.. ~. case cited above, it is clear that the information relating to the clients of Insurance & Surety and their insurance needs and expiration dates is information that is not known outside of the owners business. With regard to the second test, although individual producers have knowledge of their own regarding the information on the clients that they service, there was extensive testimony that the other producers do not have access to the information relating to the clients that the other producers service. There was testimony presented on behalf of the Plaintiff that they have taken measures to guard the secrecy of their client lists and information, including limiting access of the producers to only the clients that they themselves service. Likewise, the forth requirement is met in that there is clearly great value to this information as, for example, Insurance & Surety paid approximately $269,000 for this information back in 1986. Again, if it was so easily ascertainable as maintained by the Defendants, there would be no need to pay any money for this type of information. That also ties into the fifth requirement as the Plaintiff paid out approximately $269,000 for the client lists and the relationships that they have formed with clients were developed over the many years they have been in business. Finally, with regard to requirement number six, the testimony presented was that the information 6 that Defendant Joseph had access to while employed with Insurance & Surety, could not be easily acquired through other means. As a result, Plaintiffs have met the requirements as set forth above. The lists of clients who purchase insurance from Insurance & Surety is a list that was compiled over a long period of time and at great expense. The value of such a list to a competitor, especially a start up competitor, would be tremendous, as the competitor would avoid substantial overhead and/or start up costs involved in selling their services to area businesses. The claim of the Defendants that they are using industry or trade publications and the Worker's Compensation Bureau is unbelievable. This is especially so when you consider than in less that a month, Defendant Joseph sent out a letter specially directed to the contact persons at each company that did business with Insurance & Surety. Clearly if he did obtain this information on his own, it would have taken a substantial amount of time, assuming he was even able to do it, to gather the necessary information to even contact the company much less issue quotes on premiums as he did with the Pennsylvania Bar Institute. The Court should keep in mind that it is not the Plaintiffs intention to prevent Mr. Joseph and Integrity Underwriters from doing business and competing in the market place. They have no problem with the Defendants following the steps that they did to develop their business, including their own new client marketing and development and/or the purchasing of clients from other agencies. Stealing other agencies clients through use of information that was garnered while employed for that agency is completely unacceptable, and must be stopped. It is also interesting to note that although Mr. Joseph had been employed by other insurance agencies, he could not recall contacting any clients of those agencies when he came to work with Insurance & Surety. It is submitted that as a means of getting back at Insurance & Surety for terminating his employment, he decided to contact their clients, and to use the information that he gained while working for Insurance & Surety to attempt to undercut them. V. TORTIOUS INTERFERENCE WITH CONTRACT Pennsylvania recognizes the tort for intentional, unprivileged interference with contractual or perspective business relations of third parties. Glenn v. Point Park College, 441 Pa. 474, 272 A.2d, 895 (1971). The Restatement of Torts 9766 adopted by the Pennsylvania Supreme Court in Adler. Barish. Daniels. Levine. etc. v. Epstein 482 Pa. 416 , 393 A.2d. 1175 (1978), cert denied, appeal dismissed, 442 U.S. 907, 995 S. Cl. 2817. In that case the Pennsylvania Supreme Court determined: "Intentional 7 Interference with performance of contract by third person - one who intentionally and improperly interferes with the performance of a contract (except the contract to marry) between another and a third person by Inducing or otherwise causing the third person not to perform the contract, is subject to liability to the other for pecuniary loss resulting to the other from the third persons failure to perform the contract. .s.e.e Adler, 393 A.2d at 1183. The Pennsylvania Supreme Court further determined in Blrell v. Philadelohla Electric Company. 402 Pa. 297, 300-301,167 A.2d 472, 474 (1961): "One who, without a privilege to do so, induces or otherwise purposely causes a third person not to (a) perform a contract with another, or (b) enter into or continue a business relation with another is liable to the other for the harm caused thereby. In other words, the actor must act (1) for the purpose of causing this specific type of harm to the Plaintiff, (2) such act must be unprivileged, and (3) the harm must actually result." Id. Clearly in this case, the Defendants actions were improper. The Pennsylvania Supreme Court in ~ supra. .turns to the Restatement Second of Torts ~767 in determining whether conduct is improper: "In determining whether an actor's conduct in intentionally interfering with an existing contract or a prospective contractual relation with another is improper or not, consideration is given to the following factors; (a) the nature of the actor's conduct, (b) the actor's motive, (c) the interest of the other with which the actor's conduct' interferes, (d) the interest sought to be advanced by the actor, (e) the proximity or remoteness of the actor's conduct to the interference, and (f) the relations between the parties. Restatement Second of Torts ~767 In the present case, the close timing with which Defendant Joseph sent out his correspondence and contacted the Plaintiffs clients and requested those clients do business with Joseph through Integrity Underwriters, establishes the impropriety of the Defendants actions. 8 By way of analogy, the present case is very similar to a situation in which an associate or group of associates leaves a law firm and attempts to steal the clients from the firm. (Please note that I am not talking about situations where firms forced associates to sign noncompete agreements, which have been held to be a constitutional violation). In Mler. ID.!llli!, case, . the Pennsylvania Supreme Court held that a court of Common Pleas could properly determine that equitable injunctive relief was necessary to protect the interest of the law firm from former employees who were actively attempting to induce the clients to their new firm. The M.JM case was followed by a more recent decision from the Superior Court of Pennsylvania in the case of Joseph D. Shein. P.C. v. Myers. 394 Pa. Super. 549 , 576 A.2d 985 (1990), appeal denied, 533 Pa. 600, 617, A.2d, 1274 (1991). In the ~ case, the Superior Court held that not only could a law firm make out a cause of action against attorneys who broke away from the firm to establish their own firm and solicited the former firms clients, but they also could be awarded damages for tortious interference with contract. Thus, not unlike associates in a law firm, Mr. Joseph was given clients of Insurance & Surety to service. During his employment with Insurance & Surety he gained extremely valuable information about the clients and about the nature of their businesses and the insurance products they needed. When he left, although he admits that these were clients of Insurance & Surety, Mr. Joseph directly solicited the business of these clients without seeking the approval or even notifying the Plaintiff. As with the attorneys in the M1m: case, this type of wrongful conduct must be enjoined and the case must proceed, as set forth in the .shein case, to a potential award of damages. 9 VI. CONCLUSION For all the foregoing reasons, the Plaintiff, Insurance & Surety, Inc. requests that your Honor upon consideration of the evidence presented at the hearing and the legal arguments set forth in this Brief, issue a preliminary injunction against Defendants J. Michael Joseph and Integrity Underwriters, Inc. as requested in Plaintiffs Complaint and Motion for Preliminary Injunction. Respectfully submitted, N, DUFFIE, STEWART & WEIDNER B. ) DATE: '1.IS-<I~{ :114919 10 ~";",:,~,,,!:,,~.;.::.r~... (' - , ., (, :! ~" , '.1, ", ... :;. - Cu, : '. ., ~;;\'iY h;i\;'\':'J (...',.1, \:'t,\ I I , I I .j I I I I I I ! , 'Johnson, Duffie, Stewart & Weidner By: Joseph L. Hitchings 1.0. No. 65551 301 Market Street P. O. Box 109 Lel11oyne, Pennsylvania 17043-0 I 09 (717) 761-4540 Altomcys for Plaintiff INSURANCE & SURETY, INC., Plaintiff IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA NO. 1f~'/3J9 CIVIL ACTION - EQUITY v. J. MICHAEL JOSEPH, and INTEGRITY UNDERWRITERS, INC., Defendants MOTION FOR PRELIMINARY INJUNCTION AND NOW, Plaintiff, Insurance & Surety, Inc., by and through its attorneys, Joseph L. Hitchings, Esquire and Johnson, Duffie, Stewart & Weidner, having filed a Complaint in the above action, the averments of which are incorporated by reference herein, which Complaint seeks injunctive relief, respectfully moves for a preliminary injunction as follows: A. That Defendants Joseph and Integrity Underwriter's Inc. be enjoined from continued use of Insurance & Insurety, Inc.'s confidential information and continued contact with Insurance & Surety Inc.'s customers and clients. B. That Defendants Joseph and Integrity Underwriter's Inc. be enjoined from continued use of Insurance & Surety's confidential information and trade secrets; C. That Defendants Joseph and Integrity Underwriter's Inc. be ordered to return to Insurance & Surety, Inc. the originals and all copies of Insurance & Surety Inc.'s confidential information and trade secrets currently in Defendants possession and/or under Defendants' control; and (') ,0 q, c eo < t..- :"::! -"t,C'.' c:= n-lr:.~ .-- ;;":i :tJ ........ ~n~ ~...j N 7:('" ~..t; -.l :.0 () ,-:- ::t~ ...-::C: "T.l ~C) ::.:: 0 ~O "" c- ....4 n PC: 9 /. '.".) ~ ::! '< ~ ~ t ~ ~ ~:o- '~ ~\ , '. . ,John'son, Dnffic, Stcwart & Wcidncr By: Joseph L. Hitchings !.D. No. 65551 30 I Market Street P. O. Box 109 Lel11oyne, Pennsylvania 17043-0109 (717) 761-4540 Attorneys for Plaintiff' INSURANCE & SURETY, INC., IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA NO. y'[. 'I]2Y!( 0u- CIVIL ACTION - EQUITY Plaintiff v. J. MICHAEL JOSEPH, and INTEGRITY UNDERWRITERS, INC., Defendants COMPLAINT AND NOW, this ~ day of July, 1998, comes Plaintiff, Insurance & Surety, Inc., by and through its attorneys, Joseph L. Hitchings, Esquire and Johnson, Duffie, Stewart & Weidner, and sets forth causes of action against the Defendants of which the following is a statement: 1. Plaintiff, Insurance & Surety, Inc. is a corporation organized and existing under the laws of the Commonwealth of Pennsylvania, with a primary place of business located at 3045 Market Street, Lemoyne, Cumberland County, Pennsylvania 17011. 2. The Defendant, J. Michael Joseph (hereinafter, "Joseph") is an adult individual residing at 11 West Maplewood Avenue, Mechanicsburg, Pennsylvania 17055, with a primary place of business at Integrity Underwriters, Inc., 5300 Derry Street, Harrisburg, Pennsylvania 17111-4438. 3. Defendant, Integrity Underwriters, Inc. (hereinafter, "Integrity") is believed to be a corporation organized and existing under the laws of the Commonwealth, with a primary place of business located at 5300 Derry Street, Harrisburg, Pennsylvania 17111-4438. 4. At all relevant limes, Defendant Joseph acted both in his individual capacity and, as an employee, agent, and/or authorized representative of Defendant Integrity. 5. At all relevant times hereto, Insurance & Surety, Inc. has been in the business of selling insurance products and services in Ihe Harrisburg area and its environs. 6. Beginning on July 10, 1989, and continuing until January 15, 1998, Defendant Joseph was employed by Insurance & Surety, Inc. first as commercial line manager, then as an outside "producer" sales person. 7. Defendant Joseph in the course of his employment with Insurance & Surety, Inc. had access to customer lists with names and addresses and other contact information, including applications, pricing structures, marketing strategies, business strategies, policy numbers and renewal dates, and other salient business data of Insurance & Surety, Inc. 8. As part of his salaried compensation with Insurance & Surety, Inc., Defendant Joseph was paid a specified sum for his computer knowledge, as he was the individual who would maintain and operate the company's computer systems. 9. In his position as the computer person, Defendant Joseph had access to confidential proprietary information of Insurance & Surety, Inc., including lists of clients whose accounts were serviced by other outside sales producers. 10. Sometime after his employment with Insurance & Surety, Inc. was terminated in January, 1998, Defendant Joseph was hired by Defendant Integrity Underwriters, Inc. to engage in the business of selling insurance and/or surety bonds. 11. The information described in Paragraph 7 herein, was known by Defendant Joseph to be competitively sensitive information which Insurance & Surety, Inc. treated, and Defendant Joseph knew or should have known that as an individual in the position of confidence and trust with Insurance & Surety, Inc., he was treat, as confidential, proprietary information inasmuch as a disclosure of such information and items would operate to the detriment of Insurance & Surety, Inc. and to the commercial advantage of Insurance & Surety, Inc.'s competitors. 12. At or around the time Defendant Joseph left Insurance & Surety, Inc.'s employ, he took for his future use and for the future use of Integrity Underwriters, Inc., without the express or implied consent or permission of Insurance & Surety, Inc., various confidential information and other assets belonging to Insurance & Surety, Inc., including, but not limited to the items set forth in Paragraph 7 above. 13. It is believed and therefore averred, that Defendants Joseph and Integrity Underwriters, Inc. have used, and will continue to use said information to their commercial and competitive advantage and to the commercial and competitive detriment of Insurance & Surety, Inc. 14. Defendant Joseph has made direct contact with existing clients of Insurance & Surety, Inc. and it is betieved, and therefore averred, that he will continue to do so to his and Defendant Integrity's financial benefit, unless he is enjoined. 15. Insurance & Surety, Inc. will suffer irreparable harm and injury if the actions of Defendants Joseph and Integrity are not enjoined, including, but not limited, to the loss of clients, profits, business reputation and market share, and the loss of confidential business information, which harm and injury cannot be redressed by an adequate remedy at law. COUNT I BREACHOFRDUC~RYDUTY INSURANCE & SURETY. INC. v. J. MICHAEL JOSEPH 16. The averments of Paragraphs 1 through 15 hereof are incorporated as if more fully set forth at length herein. 17. The actions of Defendant Joseph constitute a breach of fiduciary duty owed to Insurance & Surety, Inc. by Joseph. 18. As a result of said actions, Insurance & Surety, Inc. has suffered and will continue to suffer immediate and irreparable harm for which Insurance & Surety, Inc. has no adequate remedy at law. 19. The wrongful acts of Defendant Joseph and the harm to Insurance & Surety, Inc. will continue unless enjoined. VERIFICA TION I, James Gould, President of Insurance & Surety. Inc., do verify that the statements made in the foregoing Complaint are true and correct to the best of my knowledge. information and belief. I understand that false statements made herein are subject to the penalties of 18 Pa.C.S. ~4904 relating to unsworn falsification to authorities. Dated: 7- 2 tf-1g ~ gR r:D <'. ~ ~ (') 0.0 ~ C co "" -- L =i'!:n ~, .to ~ c::! <- -ocn c: in ~ rnrl1 r- -"1m '-.,\1 \ <s::t,! N -06 \l\, "- /.-r;. --J r::J C./J~. . --I_T' ~ -.c:fi -." 1S;D r:;.. ~ j;o :..-z: ."'.. L-' :.'S:(:) c- rjm ~ )>c: .. -..., ~,~ :;0- N ?5 ' \ ~ '0 -< ~ ~ in 1 h~ Laure at Lammon l'!c:1S OI.Lumbcrl:llld l.ounry, t'ClIlISyl\':llll:l Insurance & Surety, Inc. ,,"S. J. Michael Joseph, et. al. Serve: J. Michael Joseph Now, 7/29/98 Dauphin No. 98-4329 Civil 19_ 19_. [SHERIFF OF Cl'~lBERLAi'm COUNTY, PA do bereby deputize tbe Sberiff of County to e~ecute tbis Writ, Ihis depuration being made at tbe request and risk oftbe Plaintiff. i\"ow, witbin upon at by banding to attested cop;. of the original rhe contents thereof. SWorn :Jnd SUbsciibed before me chis d:.ayof 19_ a/of)' /--:/ r/:W~d<.1 ~f SheriffofCumberJand County, Pa. Affidavit of Service 19 . at o'c1ock ~l. served tbe :J. true .::lad and made known to So answers. Sheriff of County, Pa. COSTS SERVICE MILEAGE .UFlD,-\ VIT S s access to the identity and addresscs of ccrtain Cllstomers and contact inli.lrI11ation. applications, prices. policy numbers. and renewal dates. 8. Admilted. 9. Denied as stated. While Defcndant Joseph had access to lists of clients. it is denied that the inlormation that is the subjectmalter of this action was "confidential proprietary information:' and it is denicd that Defendant Joseph's posicion as "computer person" was the reason lor his having access to this information. inasmuch as others at the ollicc had access to the information as well. 10. Admilted. II. Denied. There were no business or marketing strategies of which Defendant Joseph had any knowledge. The inlonnation to which Defendant Joseph had access was not "compctitively sensitive information" or "confidential, proprietary infonnation". Rather, the information is readily ascertainable in other ways, including search services, customer contact, networking, and similar sales approaches. It is denied that any action taken by Defcndant Joseph has been unlawfully detrimental to Insurance & Surety, Inc. Rather, Defendant Joseph has exercised his right to make a living as a sales person in a marketplace in fail' competition with the Plaintiff. 12. Denied. Defendant Joseph did not take any "other assets" belonging to Insurance & Surety, Inc. Similarly, Defendant Joseph took no lists, printouts, or documents which included any "confidential or proprietary information." Denied that Defendant Joseph had any intention at the time he was terminated by Insurance & Surety, Inc. to work for Defendant Integrity Underwriters, Inc. 13. This paragraph is dcnicd to thc cxtcnt (IHlt it implics that Dcfendant Joscph or Dc/endant Intcgrity Undcrwritcrs, fnc. is cngaging in any unlaw/hi conduct in rcgards to compctition with Insuranec & Surety, Inc. Dcfendants do not havc any "confidcntial or proprictary information"' and havc thc right to compcte fairly inthc marketplacc for all busincss, whcthcr it is currcntly placed with Insurance & Surcty, Inc. or with others. 14. Admitted that Dcfendant Joseph has contactcd many leads in the area, some of whom may bc existing customcrs of Plaintiff. Denied that Dcfendant Joseph is not entitled to do this or has donc anything unlawful in this regard. Admitted that Defendant Joscph will continuc to do so, and denied that he should be cnjoined from doing so. 15. The avern1ents of this paragraph are conclusion of law to which no response is required. In thc alternativc, it is denied that Defendants have engaged in any unlawful conduct. COUNT I 16. Paragraphs I through 15 of this Answer with Matter are incorporated herein by reference. 17. The avern1ents of this paragraph are conclusions of law to which no response is required. In the altemative, it is denied that Defendant Joseph owes a fiduciary duty or breached a fiduciary duty in regards to his former employcr, Insurance & Surety, Inc. Rather, Defendant Joseph is engaging in fair competition with a former employer, to which he is entitled to do. " 18. The averments of this paragmph arc conclusions of law to which no rcsponsc is requircd. In thc altcrnativc, it is dcnicd that Plaintiff has suffercd any injury or harm that it is compcnsablc. Morcover, it is dcnied that therc is not an adequate remedy at law for thc allcgcd brcaeh of duty. Damagcs arc an adcquate and available remedy, the right to which is expressly denied by the Defendants. 19. The avernlents of this paragraph are conclusions of law to which no response is required. In the alternative, its is dcnied that Defendant Joseph engaged in any wrongful acts or caused any hann to Plaintiff. It is further denied that Plaintiff is entitled to an injunction. WHEREFORE, Defendants demandjudgmcnt in their favor, and specifically pray: (a) That the Court deny the Plaintiffs request for preliminary and pernJanent injunctive relief; (b) That the Court refuse to order Joseph to retum confidential infonnation in his possession or under his control, which he does not have; (c) That the Court deny Plaintiff's request that Defendant Joseph give any kind of accounting to Plaintiff; (d) That the Court deny Plaintiff's claim for damages; (e) That the Court deny Plaintiff's request that the Defendant pay the cost of this action; (I) That the Court declare that Defendant Joseph has not violated any duty to Plaintiff; (g) That the Court deny the Plaintiff's request for fees and costs; and (h) Deny any other relief to the Plaintiff. COUNT" 20. Paragraphs I through 19 of this Answer with New Maller arc incorporated herein by reference. 21. Denied. Dclendant Joseph did not take any documentary information. tradc secrcts, or confidcntial information when he was terminated by PlaintifC 22. Dcnied that Dcfendant Joscph has used any "confidcntial inlonnation" for his or anyonc elsc's behalC 23. The avermcnts of this paragraph arc conclusions oflaw to which no response is requircd. In thc allemativc, it is denicd that Dcfendant has or has used any tradc secrets or confidential information, and it is dcnied that Defendants have caused by harm to Plaintiff except that hann which can result from fair and open competition in the marketplace. It is denied that the Plaintiff does not have an adequate remedy at law. 24. Denied that Defendant's have engaged in any wrongful acts, and denied that Plaintiff is entitled to an injunction. WHEREFORE, Defendants demand judgment in their favor and pray: (a) That the Court deny the Plaintiff's request for preliminary and permanent injunctive relief; (b) That the Court deny the Plaintiff's request that it order Defendant to return any documentary materials, contidential infomlation, and trade secrets, which Defendant does not have in his possession; (c) That the Court deny the Plaintiff's request for compensatory and "compunitive" damages; (d) That the Court deny the I'laintilrs request for reasonable fees and eosts; and (e) That the I'laintilTreeeive no other relief. COUNT III 25. Paragraphs I through 24 of this Answer with New Maller arc incorporated herein by reference. 26. Denied as stated. Defendant Joseph has competed against Plaintiff in the marketplace, which Defendant Joseph is entitled to do. He has done so by offering competitive products at competitive prices, and has engaged in no unlawful conduct in that regard. 27. Denied that Defendant Joseph is attempting "to induce them to break their contracts of insurance" with Plaintiff. Rather, Defendant Joseph is competing in the marketplace with competitive products and competitive prices, which he is entitled to do. All other averments of this paragraph are denied. 28. The averments of this paragraph are conclusions of law to which no response is required. In the alternative, it is denied that Defendants' acts are "without privilege". Rather, Defendants are competing fairly in the marketplace with competitive products and competitive prices, which they are entitled to do. All other averments of this paragraph are denied. 29. Denied that Plaintiff has suffered any harm that is compensable, and, even if Plaintiff were to prove such hann, there is an adequate remedy at law, the right to which is expressly denied. 30. Def'endunts intend to continue to compete Illirly in the murketpluce with competitive products und competitive prices. It is denied thut Plaintirf hus any right to an injunction or that Delcndunts should be enjoined. WHEREFORE, Dclcndunts demand judgment in their fhvor and pray: (n) Thutthe Court deny the Plaintilrs request for injunctive relief; (b) (c) That the Court deny the Plaintiff's request lor compensatory and punitive damages; That the Courl deny the Plaintiff's request lor an award of reasonuble Ices and costs; and (d) Tlllltthe Courl deny the Plaintiffs request for other relief. COUNT IV 31. Paragraphs 1 through 30 of this Answer with New Maller arc incorporated herein by reference. 32. The averments of this paragraph are conclusions of law to which no response is required. In the alternative, it is denied that Defendants have "acted in concert and have conspired to violate Plaintiff's rights". Rather, Defendants have engaged in fair competition in the marketplace by offering competitive products at competitive prices. WHEREFORE, Defendants demand judgment in their favor and pray: (a) That the Court deny the Plaintiff's request for injunctive relief; (b) That the Court deny the Plaintiffs' request for an accounting; (c) That the Court deny the Plaintiff's rcquest that the Defendants be directed to pay damages to Plaintiff; (d) That the Court deny the Plaintin"s request lilr a declaration that Defendant Joseph has willfully violated any duly to Plaintiff: (c) That the Court deny the Plainlilrs rcquest lilr an injunction regarding "confidential information and trade seercts", which arc not in thc Defendants' possession: (I) That thc Court dcny the Plaintiffs rcqucst that originals and eopics of "confidcntial infomlation and trade sccrets" be rcturned to Plaintin: which documents arc not in Dcfcndants' posscssion; (g) That the Court deny thc Plainlitrs rcquest for injunctive relict; (h) That the Court deny the Plaintiff's request for an award of compensatory and punitive damages; (i) That the Court deny the Plaintiffs request for rul award of reasonable attorneys fees ruld costs; and G) That the Court deny the Plaintiffs request for other relief. NEW MATTER 33. While Defendrults deny Plaintiffs allegations, Plaintiff does have rul adequate remedy at law for the alleged harm, which remedy is damages. 34. The Plaintiff has failed to identify rulY trade secrets or proprietary information, the use of which would entitle Plaintiff to the demanded relief. 35. The Plaintiff has failed to state a claim upon which relief can be grrulted for injwlctive relief. 36. The Plaintiff has failed to state a claim upon which relief Crul be granted for breach of a fiduciary duty. ..... 37. The Plaintiff has Ihiled to state a claim upon which relicI' can be granted Illr unl[lir competition by use of trade secrets and eonlidential inlormalion. 38. Defendants do not possess any trade secrets or confidential infonnalion of Plaintift: 39. Plaintiff has lailed to slale a cause of action upon which relief can be granted lor tortious interference with contract. 40. Defendants arc entitled to compete I[tirly in the marketplace with competitive products offered at competitive prices 10 potential customers, including those who currently purchase insurance through Plaintifrs agency. 41. Plaintiff has failed to state a cause of action upon which relief can be granted for civil conspiracy. 42. Plaintiff has failed to stale a cause of action upon which relief can be granted for punitive damages. 43. Plaintiff has failed to state a cause of action upon which relief can be granted for attorneys fees. 44. Plaintiff has failed to state a cause of action upon which relicI' can be granted for a declaration that the Defendants should make an accounting and return confidential infonnation, which Defendants deny having in their possession. 45. By previously harassing Defendants and by filing this suit, Plaintiff's actions are merely an attempt to restrain trade and limit Defendants' ability to compete fairly in the marketplace. 46. This action is frivolous and is intended merely to harass Defcndants and destroy competition. . \;;:..:".;;~';';~'J.';'~~;';;:';~ 37. Denied. The averments of Paragraph 37 constitute conclusions of law to which no responsive pleading is required. 38. Denied. Strict proof thereof is demanded at time of trial. 39. Denied. The averments of Paragraph 39 constitute conclusions of law to which no responsive pleading is required. 40. Admitted In part. Denied in part. It is admitted that this is a capitalist society, and Defendants are entitled to compete. It is denied that Defendants may use confidential information of the Plaintiff to their economic advantage. 41. Denied. The averments of Paragraph 41 constitute conclusions of law to which no responsive pleading is required. 42. Denied. The averments of Paragraph 42 constitute conclusions of law to which no responsive pleading is required. 43. Denied. The averments of Paragraph 43 constitute conclusions of law to which no responsive pleading is required. 44. Denied. The averments of Paragraph 44 constitute conclusions of law to which no responsive pleading is required. 45. Denied. Plaintiff has not harassed Defendants nor are they attempting to restrain trade, but rather are seeking to protect confidential information which the Defendants are wrongly using. 46. Denied. The averments of Paragraph 46 constitute conclusions of law to which no responsive pleading is required. 47. Denied. The averments of Paragraph 47 constitute conclusions of law to which no responsive pleading is required. 2 ~. F/! rr) ~,~ '.1.. "', -~'.. ,-I ;'-FII'''' '. I '. . ,. ..:~:.~ ~\<'. )~,'l'I,J I),',,,,, ..J .....;.,~ . . ... . L:....:.. IT. '" ?: Ii? i",.:/",' '.r ;v "I . INSURANCE & SURETY, INC., Plaintiff IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA V. J. MICHAEL JOSEPH, AND INTEGRITY UNDERWRITERS, INC. Defendants . . NO. 98-4329 EQUITY TERM : IN RE: PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION BEFORE GUIDO, J. OPINION AND ORDER OF COURT Plaintiff filed a complaint in this matter alleging, inter alia, that Defendant Joseph had misappropriated certain "trade secrets" while he was employed by Plaintiff. Plaintiff has requested a preliminary injunction to prevent Defendants from contacting its customers pending final resolution of the lawsuit. A hearing on the preliminary injunction was held before this Court on September 8, 1998. Both parties have filed briefs. This matter is now ready for disposition. FINDINGS OF FACT 1) Plaintiff is in the business of selling insurance to businesses. 2) Defendant Joseph began working for Plaintiff in July of 1989. 3) The last position he held was that of a producer. His function was to develop new clients and to call on existing clients. 4) The information contained in a client's file would include the insurance contract, policy premium, expiration date, and NO. 98-4329 EQUITY TERM However, the general rule is that equity will not protect mere names and addresses, or other knowledge gained through employment, unless it was gained through confidential sources.4 Sorinq Steels. Inc. v. Mollov, 400 Pa. 354, 162 A.2d 370 (1960). Furthermore, the use of customer names retained solely by mental processes cannot be properly enjoined. Carl A. Coltervhan Dairv, Inc. v. Schneider Dairv, 415 Pa, 276, 203 A.2d 469 (1964). Finally, the Plaintiff would have no protectable interest in customers developed by Defendant during his employment. Fidelitv Fund. Inc. v. DiSanto, 347 Pa. Super. 112, 500 A.2d 431 (1985). However, even if Defendant's conduct were clearly actionable, and Plaintiff's right to relief clear, a preliminary injunction would still be inappropriate. Our Supreme Court has stated on many occasions that such an injunction should not issue unless all of the following essential prerequisites are present: first, that it is necessary to prevent immediate and irreparable harm which could not be compensated by damages; second, that greater injury would result by refusing it than by granting it; and third, that it properly restores the parties to their status as it existed immediately prior to the alleged wrongful conduct. (emphasis added) (citations omitted) John G. Brvant Co. v. Slinq Testinq and Repair. Inc., 471 Pa. 1, 7, 369 A.2d 1164, 1167 (1977). In the instant case, we are satisfied that Plaintiffs have failed to meet the very first prerequisite. The testimony clearly shows that any loss 4As noted above, we are satisfied that all information in the client files can be obtained from other sources. 4