Bramwell, 819 F. Supp. 417, 431 (E.D.Pa. 1993). The courts will not grant protection to customer lists which are readily and easily generated from trade journals, telephone book listings, or other sources of information available generally. Bell Fuel Corp. v. Cattolico, 375 Pa. Super. 238, 544 A.2d 450, 461 (Pa. Super. Ct. 1988) (collecting cases).
To prevail on a claim of confidentiality, the moving party must also demonstrate that reasonable precautions under the circumstances were taken to prevent unauthorized disclosure to third parties, and that such individuals could access the material without difficulty only by resort to unlawful methods. Id.
"The owner of a trade secret, unlike the owner of a patent, does not have a monopoly over the process or formula. He is only protected from other persons' gaining access to it either by stealing it directly from him, or having another to whom it was lawfully disclosed do so." National Risk, 819 F. Supp. 417, 431.
Others in the business are free to compile the same information so long as they obtain their knowledge through their own independent efforts and not merely "borrowing" the information from their competitor. Adapted from National Risk, 819 F. Supp. at 431, citing Continental Data Systems, Inc. v. Exxon Corp., 638 F. Supp. 432, 442 (E.D.Pa. 1986) and quoting Greenberg v. Croydon Plastics, 378 F. Supp. 806, 812 (E.D.Pa. 1974).
The fact that individual pieces of the information claimed to be confidential are available to the general public does not defeat a claim of confidentiality if the value of the information stems from its compilation or collection in a single place or in a particular form which is of value. National Risk, 819 F. Supp. at 432.
When disclosures of a confidential nature are made to an employee or an independent contractor, all trade secrets created out of that relationship are the exclusive property of the employer or the contracting party. Computer Associates International, Inc. v. American Fundware, Inc., 831 F. Supp. 1516, 1524 (D.Colo. 1993); quoting 2 Melvin F. Jager Trade Secrets Law § 8.01 at 8-3.
Here, the evidence before us establishes the following: Acker retained no files, customer lists, data bases, microfiche films or other stored data belonging to Mettler-Toledo. All that he took with him is the accumulated knowledge obtained over his seven year period with the company.
Mettler-Toledo has no protectible interest in the customer information at issue. A good deal of the information can be obtained from sources available to the public generally, such as telephone directories, university and hospital directories. The remainder can be readily obtained by contacting the entities listed in such directories and making inquiries as to who should be contacted about servicing the precision equipment, when services fall due, etc. All of this can be accomplished with relative ease and some perseverance by Acker or any one else familiar enough with the industry to know what types of businesses or agencies use precision equipment.
This court's decision earlier this year in Appleby v. Caradon Thermal-Gard, (M.D.Pa. 1995) illustrates the distinction between what is protectible as a trade secret and what is not. In that case, Appleby's manner of doing business generated a unique list of customers which identified individual homeowners who had purchased one or more replacement windows from Appleby and were, therefore, likely to be in the market for additional replacement windows within the next few years. Aside from the labor intensive manner in which Appleby compiled its list, there is no way to readily obtain this information by researching public records, etc. Any one wanting such a list would have to go through the same process Appleby did by contacting on an individual basis each and every homeowner in a certain locality to see if he or she were interested in purchasing replacement windows, had recently replaced some, but not all of the windows in his house, etc. The effort that went into compiling the list and its uniqueness and the inability of others in the industry to readily or inexpensively compile the same list made it protectible as a trade secret. Mettler-Toledo's list, on the other hand, has none of these qualities.
Here, Acker did not retain any physical property of Mettler-Toledo; it was all returned to Mettler-Toledo immediately upon termination of his employment. This included all documents, whether in the form of microfiche, hard copy or otherwise, which contained information pertaining to Mettler-Toledo's customers. Nor did he utilize those documents in compiling his new customer lists. Pieces of information concerning customers which an employee may recall from years of dealing with and helping to compile the same, or comparable data which he is able to compile on his own based on the experience and knowledge acquired through years of working in the business, are not protected as confidential trade secrets.
It is also for these reasons that the clause set forth in Acker's employment application barring his use of confidential information does not come into play. The application provided that:
I further understand that any knowledge whatsoever of a confidential nature which I may acquire as a result of or in connection with my employment shall remain the sole and exclusive property of Mettler Instrument Corporation both during and after termination of my employment.
Having found that the information at issue is not a confidential trade secret, the "confidentiality clause" quoted above does not apply.
Granting Mettler-Toledo the relief which it seeks would give it the functional equivalent of a non-compete agreement. He would be barred from competing for any customers which he serviced during his seven-year employment with Mettler-Toledo. Because the market for his services is finite--only certain entities use the type of equipment he services, e.g. hospitals, universities, municipal sewage services, he would be effectively shut out of the market. His only option would be to attempt to establish his area outside the boundaries of his former territory.
Mettler-Toledo has no basis for obtaining such relief. Acker did not sign a non-compete agreement. There is, therefore, nothing which legally bars him from competing directly against it in his former territory and it would be improper for this court to bring about that result. He is entitled to use all of the skills, knowledge, and business acumen he acquired over the years he was employed by Mettler-Toledo. So long as he uses no trade secrets or confidential information of the company, he is free to compete aggressively against it.
Plaintiff has not persuaded this court that it has a protectible trade secret or right of confidentiality in the customer information which its seeks to prevent Acker from using and has not, therefore, established a likelihood that it will succeed on the merits.
Plaintiff's showing of irreparable harm
We also remain unpersuaded that plaintiff will suffer irreparable harm, i.e. harm not compensable in monetary damages if the injunction is not granted. What is at stake is the possibility that customers will shift their business from Mettler-Toledo to PIS during the pendency of this action. If that occurs and if plaintiff prevails on the liability issues at trial, damages can be readily ascertained by reviewing the customer lists and receivables of both for the Harrisburg area and determining which customers shifted their business from Mettler-Toledo to PIS during the interim period.
Maintenance of the status quo
Denying the injunction will preserve the status quo. Acker has been operating his competing business for nearly two months. Granting the injunction now would effectively require him to cease soliciting or doing business with any of his former customers in the Harrisburg territory and to cancel service contracts with the 36 customers PIS has acquired.
Balancing of the equities
A balancing of the equities clearly supports denial of the requested injunction. Mettler-Toledo appears to have no protectible interest in the information which it seeks to preclude Acker from using or compiling on his own. Issuing the injunction would require, in effect, the immediate cessation of most business by PIS. Acker would have to cancel existing service contacts with any former Mettler-Toledo customer. Acker depends upon the income from his fledgling business to support his wife and child and has no other outside employment at this time. He has incurred substantial debt in establishing the business and acquiring tools, office equipment, etc. All that he has invested would be at risk if the injunction issues.
Conversely, Mettler-Toledo will not be placed in any peril if the injunction does not issue. Its sales revenues from the Harrisburg territory are an insignificant percentage of its total revenue and it will, in all likelihood, be deprived of only an insubstantial portion of that revenue during the pendency of this action. During the two months of its existence, Acker has persuaded only ten customers out of an approximate 760 Mettler-Toledo customers in the Harrisburg territory to choose PIS over Mettler-Toledo. The loss of revenue from some service customers in the territory will not cause Mettler-Toledo any financial or other harm which cannot be fully compensated for at a later date.
For all of these reasons, we decline to issue the injunction.
CONCLUSIONS OF LAW
1. Federal jurisdiction exists on the basis of diversity of citizenship. 28 U.S.C. § 1332.
2. Mettler-Toledo has no protectible property interest in the customer information it seeks to preclude Acker or PIS from compiling or utilizing to compete against it.
3. Such information is not protectible as a trade secret under Pennsylvania law.
4. Mettler-Toledo will not suffer irreparable harm if the injunction does not issue.
5. Any harm or losses which plaintiff may suffer if Acker is allowed to remain in competition against it are fully compensable in money damages. Any revenue lost to Acker or PIS can be readily calculated.
6. Issuing the injunction would have a significant detrimental impact on the defendant.
7. Denying the injunction will have only a minimal impact on the overall operations and profitability of Mettler-Toledo.
8. Denying the injunction will maintain the status quo.
9. Plaintiff had no non-compete agreement with defendant and is not entitled to the functional equivalent of the same under the guise of a preliminary injunction.
* * *
An order will issue consistent with this memorandum.
James F. McClure, Jr.
United States District Judge
November 21, 1995
For the reasons stated in the accompanying memorandum, IT IS ORDERED THAT:
Plaintiff's motion for a preliminary injunction (record document no. 2, filed October 3, 1995) is denied.
James F. McClure, Jr.
United States District Judge