IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA
January 8, 2010
NORDETEK ENVIRONMENTAL, INC., ET AL.
RDP TECHNOLOGIES, INC.
The opinion of the court was delivered by: Dalzell, J.
This litigation involves a complex business dispute arising from a simple and ancient cause, enmity between brothers. As the accounts from Biblical times through films like The Godfather have rehearsed, fraternal venom is a potent poison, as will shortly be on display here.
On December 17 and 18, 2009, we convened on an expedited basis a hearing on cross-motions for preliminary injunction that the two brothers or their respective firms had filed. After considering the testimony from that hearing and the voluminous documentary record adduced therein, together with the parties' detailed pre- and post-hearing submissions, we offer the following analysis of that record and the law, which will constitute our findings of fact and conclusions of law within the meaning of Fed. R. Civ. P. 52(a)(2).
I. Factual Background
A. History and Business of RDP Technologies, Inc.
Defendant RDP Technologies, Inc. ("RDP") is a family business that is now jointly owned by plaintiff Paul Christy (43%) and his older brother, Dick Christy (57%). The brothers' father and Dick founded the business in 1978, and they named it after the three Christy brothers, R[obert] (who at one time owned 10%), D[ick] and P[aul].*fn1 Dick has been the President and majority shareholder of RDP from its inception, and Paul served as its Secretary and Treasurer until at least June of 2008.*fn2 Stip. Facts, Pl. Supp. Br. Ex. D ("Stip. Facts"), at ¶¶ 3-4, 13-16. The brothers' father initially owned 49% of RDP, but in 1982 he decided to give his shares to Rob and Paul.*fn3
According to Paul, RDP "sells components that go into water and waste water treatment plants," and its target market is "[w]ater and sewer authorities throughout the United States." Paul Christy Dep. at 296. The parties also stipulated to the fact that "RDP sells water and wastewater treatment equipment, and provides the engineering services necessary to design and install this equipment." Stip. Facts at ¶ 2. The Tekkem lime slakers at the center of this dispute are used primarily for water treatment, rather than wastewater treatment, but they could be used in either setting. Paul Christy Dep. at 295.
B. 1995 Shareholder Agreement
On July 1, 1982, the three brothers and RDP entered into a Corporate Stock Redemption Agreement that was superseded on November 1, 1995 by an amended agreement among them. Amended and Restated Shareholder Agreement, Ex. D-1*fn4 ("1995 Agreement"). This document allocated 4,100 shares, or 51%, of RDP's common stock to Dick, 3,145 shares, or 39%, to Paul, and 800 shares, or 10%, to Robert.
The 1995 Agreement had at § 9 an extensive "Restrictive Covenant and Trade Secret/Confidential Information" provision. In essence, § 9 provided that if any shareholder's employment at RDP terminated "for any reason" then "that Shareholder shall not engage either directly or indirectly in any manner or capacity whatsoever (including principal, agent, partner, officer, director, shareholder, employee, consultant or otherwise) in any business competitive with the business" of RDP "in the United States, Canada or anywhere in the world that the Corporation is currently doing business." Id. § 9(b). The Agreement imposed this non-competition covenant ("NCC") on a terminated shareholder "[f]or a period of two years after the date on which" the terminated shareholder has left RDP's employ. Id. The 1995 Agreement also restricted the shareholders from using or disclosing RDP's confidential information. Id. at § 9(c). The brothers acknowledged that any violation of the non-compete or confidentiality provisions "would result in irreparable injury" to RDP. Id. at § 9(d). And § 10 of that Agreement explicitly provided that the signatories "agree that the subject matter of this Agreement is unique and that the remedy at law for any breach of any of the terms of this Agreement would be inadequate." Id. at § 10. Lastly, the Agreement provided at § 15(b) that it could only be amended if "made in writing and signed by all Parties hereto," i.e., by the three shareholders and RDP. Id. at § 15(b).
Paul testified that the 1995 Agreement did not change his job responsibilities or number of shares and that he did not receive additional compensation in exchange for signing it. But the 1995 Agreement barred RDP from terminating the employment of Rob and Paul except for cause, death, or disability. Dick could only be terminated for death or disability. Id. at § 5(d). Dick testified that Paul wanted to revise the shareholder agreement to limit RDP's ability to fire him and that this provision was not in the 1982 agreement. The 1995 Agreement also obligated RDP to repurchase the shares of a shareholder whose employment terminated. Stip. Facts at ¶ 34 (stating that Paul "is entitled to have his shares of RDP stock repurchased" pursuant to the 1995 Agreement "[a]s a result of his resignation from RDP").*fn5 Indeed, on November 12, 2009 RDP sent Paul a Judgment Note for $574,371.35, which it believes is the value of Paul's shares. Ex. D-17. Paul has, so far as we can tell, not done anything with the Note or accompanying documents. See Paul Christy Dep. at 161-63. The mutual NCC, the limitations on RDP's ability to terminate a shareholder's employment, and RDP's repurchase obligations were apparently not in place until the 1995 Agreement. There is no evidence in the record to the contrary.*fn6 Paul agrees that all three brothers were bound by the 1995 Agreement, including the NCC in ¶ 9. Paul Christy Dep. at 129, 137.
On May 5, 1997, Robert Christy decided to sell his ten percent interest, or 800 shares, back to RDP. See Ex. D-70. Notably, but unsurprisingly, this document was only signed by its parties, Robert W. Christy, Jr. and RDP; Paul signed the document not as a party but to attest his brother Dick's signature as President of RDP. Because all parties to the 1995 Agreement did not sign the 1997 document, it did not constitute an amendment of the 1995 Agreement*fn7 though, to be sure, the net result was that RDP's ownership became the current 57% - 43% split between Dick and Paul.
C. RDP's Business and Its Relationship with Stephansen
RDP has been, and remains, in the business of selling and servicing water treatment and wastewater treatment equipment throughout much of the United States. Although RDP usually deals with general contractors in the course of its business, the ultimate consumers of its products are ordinarily municipalities like the City of Ann Arbor, Michigan, which intervened in support of RDP in this litigation.*fn8
The purification of water and the treatment of wastewater to assure environmental protection are complicated tasks. Lime slakers, which are at the center of this dispute, prepare powdered lime to make it usable for water purification. Lime changes the pH of the water and removes minerals, which makes the water softer. There are a number of technologies --slakers and other techniques -- available to accomplish such treatment, but one such technology is produced by an entity known as TEKKEM P.R. Stephansen A.S., a Norwegian corporation based in Borgen, Norway, whose principal is one Poju R. Stephansen. We refer to this bundle of technology as "Tekkem." It is undisputed that Tekkem, though by far the most expensive technology for this purpose, is also quite effective in water treatment, which is its primary use in the United States.*fn9 Indeed, as much as a third of the projects RDP enters into uses Tekkem. RDP has never used nonTekkem slakers, but Dick testified that other companies make slakers and that RDP could use them. See also Paul Christy Dep. at 305 (other companies besides Tekkem make slakers in the United States). RDP also has other lines of business (for example, in wastewater treatment) that do not use Tekkem.
Pertinent to the current controversy, since August 15, 1997 RDP has been a party to License Agreements for Tekkem, most recently in the iteration dated January 25, 2001. License and Distribution Agreement, Ex. D-18 ("2001 License Agreement"). That agreement provides for a royalty beginning at $3,000 per slaker with a five percent annual increase on that part of the fee after the year 2000. Id. at Exhibit A. It also provides for an additional royalty of "2 per cent of gross value" of RDP's contracts involving Tekkem technology (the "Two Percent Calculation"). Id. Stephansen required RDP to sell a minimum number of slakers per year, and if RDP did not do so its license could become non-exclusive. Id. at § 3(c). But if RDP failed to make other payments to Stephansen, such as the fees from the Two Percent Calculation, Stephansen could terminate the license after notice and a thirty-day period to cure the default. Id. at § 12(c).
The 2001 License Agreement required RDP to submit quarterly reports and pay royalties within thirty days of the end of each quarter. Id. at §§ 5(c), 9. But, in practice, Paul -- who always prepared these reports for Stephansen and approved royalty payments -- sent the reports about once a year. RDP would usually wait for direction from Stephansen regarding when and where to send the royalty payments. RDP wired the money to accounts in Norway and the Canary or Cayman Islands, paid Stephansen's airplane repair bills in the United States, and even gave Stephansen a royalty check to cash in the United States. Paul Christy Dep. at 207-10. On at least one occasion, Paul requested -- and Stephansen granted -- a thirty-to-sixty day extension for RDP's royalty payments. Paul testified that the exact timing of the reports and payments was not "a big deal." Emails between Paul and Stephansen or his employees show that Stephansen was often flexible about the timing of RDP's reports and payments. See Ex. D-33. See also Paul Christy Dep. at 205-06, 214 (confirming that Stephansen was "pretty flexible" about the timing of payments and that Paul knew this).
RDP developed some of its own technology to deal with its customers' concerns with the Tekkem slakers, for example, with the buildup of grit in the system. By August 26, 2008, RDP had secured U.S. Patent No. 7,416,673 (the "'673 patent"), which Paul and RDP employee Michael Quici filed on March 31, 2006 and assigned to RDP. The '673 patent is for "[a] method and apparatus . . . for conveying lime slurry, removing and controlling the amount of grit" that accumulates in the water purification process. See Ex. P-9 at 1. Because RDP had developed the grit removal technology underlying the '673 patent, Dick decided that grit removal should be excluded from the Two Percent Calculation. When Dick told Paul about this idea, Dick explained that RDP should not pay royalties on the "grit classifier" because "[i]t was something that we [RDP] had developed." Paul Christy Dep. at 218-19. Paul disagreed and thought this would conflict with the 2001 License Agreement because in his mind the grit classifier was part of the slaking system.*fn10 Id. at 218-21. See also Dick Christy Dep., Pl. Supp. Br. Ex. A, at 62 (stating that Paul "questioned" this judgment). Dick nonetheless implemented this decision by at least 2008, although it is not clear in the record when, precisely, this happened. RDP may have omitted other items from the Two Percent Calculation as well, such as the "platforms" and installation. But the '673 patent was the primary issue that the parties discussed at the hearing with respect to the Two Percent Calculation.*fn11 Quici, a current Director of RDP who has been with the company for about twenty-five years, testified that the dosing system and fine grit classifier were usually excluded from the Two Percent Calculation.
Paul claims that he did not know until early 2009 that RDP changed the Two Percent Calculation because the total royalties for the first projects on which this change was made did not appear in RDP's accounting system until that time. Paul did not talk to Dick about this issue when it came to his attention again in early 2009. Moreover, Paul himself instructed others at RDP not to include installation or the soda ash system in the Two Percent Calculation. See Ex. D-32, D-61; Paul Christy Dep. at 187-197. He testified that the soda ash system was separate from the slaker system and that Stephansen should not get royalties on the soda ash system because it did not use Tekkem. According to Paul, Stephansen occasionally -- but not usually -- received a royalty on the installation costs because the contractor typically installed the equipment.
On behalf of RDP, Paul negotiated the 1997 and 2001 licensing agreements with Stephansen, and it seems undisputed that until Paul's departure he was the shareholder primarily entrusted with maintaining RDP's relationship with Stephansen. Indeed, it was quite evident from the testimony that by 2009 Paul had achieved a very close relationship with Stephansen, so much so that he often had conversations and dealings with the Norwegian principal about which his brother Dick knew nothing. According to Paul, Stephansen spent Thanksgiving with Paul's family one year, and Paul also stayed at Stephansen's home during his visit to Norway in August of 2009, which we describe more fully below.*fn12 Paul Christy Dep. at 175-76.
D. Enmity Between Brothers and Conflict With Stephansen
In recent years, the relationship between younger and older brother became so strained that they were barely on speaking terms. Paul moved to California in September of 2008, in effect to set up a West Coast office of RDP, and operated as much as possible independently of Dick. See Paul Christy Dep. at 20. Dick declared that this plan was "abandoned" in his email to Paul on January 16, 2009, and Paul says that he started going back and forth more between Pennsylvania and California at that time. Ex. D-50; Paul Christy Dep. at 63. According to Paul, he "officially" returned to Pennsylvania to work in June of 2009. Paul Christy Dep. at 63.
It is evident that in 2009 the brothers' relationship deteriorated from frigid to belligerent. By this time, an opportunity presented itself for Paul to administer what he regarded as a coup de grâce against RDP and Dick by exploiting his relationship with Stephansen. Without informing anyone at RDP, including Dick, in May or June of 2009 Paul sent to Stephansen a list of eleven Tekkem-involved projects where Stephansen was paid less than the full two percent on the total gross project price.*fn13 Paul testified that he disagreed with Dick's decision to change the Two Percent Calculation but thought that Dick created the problem and should fix it. He also said that he did not want to submit "false" numbers to Stephansen. This gratuitous information resulted in a telephone conversation that Stephansen had with Paul in early July of 2009, during which Paul reported that Stephansen was "rather upset." Paul told Stephansen that Dick had changed the method of the Two Percent Calculation but did not explain why. Paul never disclosed this conversation to Dick.*fn14
Paul's report to Stephansen also led to Stephansen's July 7, 2009 email to Paul whose text stated, in full:
Tekkem Slaker Fee Schedule and our Licence Distribution Agreement The plus 5 per cent increase in slaker fee per year to compensate for assumed Inflation, based on the value of US $3000 for the year 2000, has never been fulfilled. This must be corrected now and calculated from year 2000. To compensate for lost Interest over time we want now instead of 5 per cent, 7 per cent. Also when checking your Tekkem Slaker Fee Schedule we find several incorrect values from the 2 per cent system royalty from the following projects[.]
Thereupon, Stephansen listed projects pursuant to which he claimed there was a total shortfall of $39,225 in addition to the discrepancy regarding the per slaker royalty. Paul said that both he and Stephansen neglected to calculate the five percent increase, and he thought that RDP would pay Stephansen for that discrepancy as well as the supposedly low fee for the Two Percent Calculation. Given the tone of Paul's undisclosed phone conversation with Stephansen, he was not surprised to receive Stephansen's email.
Paul never responded to the July 7 email, but transmitted it to his older brother the next day. See id. The complete text of that email stated:
I am forwarding an e-mail I received from Stephansen yesterday.
Paul Christy RDPTech.com Id. Paul did not tell Dick that he thought RDP should pay the disputed amount of the Two Percent Calculation, but at some point he left Dick a voicemail informing him that he should take care of the issue.
On July 24, 2009, Dick sent an email to Stephansen, which began with the following paragraph:
Paul sent me your email and asked me to resolve this question. I am not sure why Paul asked me to do this because he has managed the accounting and book keeping for the past 30 years. Nonetheless a mistake has been made and I want to this [sic] corrected in a timely manner.
Dick told Stephansen that after reading the 2001 License Agreement, he saw Stephansen's "point," and he explained that it would take "some time" to do the underlying calculations. Id. He also offered to meet with Stephansen at an upcoming industry conference or visit him in Norway.
Six days later, someone sent an email back to Dick Christy, which said, in full:
Mr Stephansen is on vacation and will be back 15th August.
Best regards, Annika Hjelle
Unbeknownst to Dick, Paul had during the first week of August flown to Norway to meet with Stephansen while the Norwegian was said to be "on vacation". Stephansen had invited Paul to visit earlier in the year, supposedly to see slaker improvements. In his testimony, Paul would have us believe that the only thing that happened during the six hours he was with Stephansen is that he looked at slakers. At his deposition, Paul described his vacation in Norway as a "personal trip." Paul Christy Dep. at 181. See also id. at 330 (explaining that he saw a sewage plant in Hawaii during his honeymoon). But at the hearing Paul said that he was acting on behalf of RDP during his visit with Stephansen. Stephansen asked Paul about the Two Percent Calculation issue, and Paul says that he replied that he had no authority on that issue and that they did not discuss it further. While Paul's testimony about this trip was incredible on its face, most notable for our purposes now*fn15 is that Paul never disclosed the existence of the meeting to his brother Dick.
Michael Quici, a current RDP Director who has worked for the company for about twenty-five years, spoke with Stephansen on August 18, 2009 after Stephansen returned from "vacation." Quici described that conversation as "pleasant" and said that Stephansen did not use the word "default." Quici did not get the impression that there was any urgency in resolving the fee dispute. See Michael Quici Dep. at 72-74. At that point, Quici thought there had been an "accounting error" and did not know that Stephansen's concerns were rooted in Dick's change to the Two Percent Calculation. Id. at 75-76. When Quici asked Stephansen for the basis of the numbers in his July 7 email, Stephansen told Quici that he got the information about the disputed royalty amounts from Paul. Quici therefore asked Paul to send him that report, and Paul did so the next day. See Ex. D-21. In Stephansen's phone conversation with Quici, he did not mention Paul's visit to Norway just two weeks earlier.
On August 27, 2009, Stephansen sent Dick and Paul a letter by fax and mail that for the first time referred to the July 7 email as "a notice of default." See Ex. D-22 at 1. This triggered, in Stephansen's view, "article 12(c) of the [2001 License] Agreement, that the Agreement is terminated with effect from 1 September 2009." Id. at 2.*fn16
When RDP received the August 27 letter, its corporate attorney asked Paul to call Stephansen right away regarding the situation. Paul again displayed his studied disinterest in resolving the fee dispute by declining to call Stephansen.*fn17 He told us that he simply did not know what to say to Stephansen about the issue, and Paul also takes the preposterous position that it was in RDP's best interests for him -- RDP's primary contact with Stephansen -- to refuse to make the call to this important supplier at this facially crucial time.
As one might expect, Dick took a different approach and responded immediately to Stephansen's August 27 letter. In Dick's August 28 letter to Stephansen, he stated that he "was very surprised" because he "had thought, based on our conversations and emails, that we were working towards resolving the questions you had raised about the royalty payments you have received under the agreement." Ex. D-23. But as "a show of good faith," Dick wrote to Stephansen that though, in Dick's view, the "amount is clearly an overpayment," he nevertheless was ready to wire "$106,091.00*fn18 to your bank account in accordance with your prior instructions on making royalty payments." Id. Dick also asked Stephansen to confirm where to wire the payment and offered to meet with Stephansen to discuss the issue. Id. On August 31, Dick, Quici, and their attorney had a phone conversation with Stephansen, and Quici said that Stephansen told them he "would consider reinstating the agreement." Michael Quici Dep. at 99-100. On September 1, Stephansen emailed Dick with instructions regarding where to wire the $106,091 and told him that Stephansen would "use our best endeavours to come to an equitable solution." Ex. D-24. RDP wired the funds shortly thereafter.
E. Paul's Resignation and Founding of Nordetek
It is undisputed that on September 18, 2009 Paul resigned as an employee, officer, and director of RDP.*fn19
Notwithstanding his receipt of RDP's wired funds, Stephansen wrote to Dick on October 2, 2009 and reiterated that the agreement had been terminated. Ex. D-27. He demanded that RDP stop using the Tekkem trademark and cease advertising Tekkem slakers. Id. RDP's attorney responded on October 5 and explained RDP's view that Stephansen had not terminated the license. Ex. D-28.
Just three weeks after resigning from RDP, Paul on October 9, 2009 incorporated Nordetek Environmental, Inc. in Delaware. Nordetek purportedly has its principal place of business in California, and Paul is its only owner and employee.*fn20 Paul Christy Dep. at 237-38. It is also undisputed that four days later Nordetek signed a putatively exclusive License Agreement with Stephansen. See Ex. D-46. This litigation ensued the next day.*fn21
At the preliminary injunction hearing, Paul claimed that he did not speak to Stephansen regarding Nordetek getting the Tekkem license until early October. But in the plaintiffs' responses to RDP's interrogatories, they swear that Paul and Stephansen first discussed having a company created by Paul serve as the Stephansen licensee "no earlier than September 26, 2009." Ex. D-71 at 4. Even before Paul resigned, Stephansen asked him if he could help find a new licensee, but Paul allegedly responded that he could not work on that issue while he was still an RDP employee. Id.
Paul claims that Nordetek has everything it needs to sell Tekkem slakers by virtue of its licensing agreement. He told us that once Nordetek got this license, it was "instantly" in that business.
But Dick credibly testified that Nordetek would need additional technology and know-how to sell the slakers and provide the engineering expertise to support their installation.
Dick cited as one example RDP's development of technology to address the grit issue. He also said that RDP has improved on the computer software that Stephansen provided with the Tekkem license. Paul responded that Nordetek will be able to complete its first potential contract in Dallas with assistance from Stephansen and without using RDP's proprietary information. Tekkem slakers are in use in many locations outside of the United States, so in Paul's view it is plausible that Nordetek could install the Dallas slaker with Stephansen's help without using RDP's patent or other technology.
Paul also testified that Nordetek's only business is Tekkem lime slakers. He does not believe that Nordetek competes with RDP because from his perspective RDP no longer has a Tekkem license, and Tekkem slakers are Nordetek's only line of business.*fn22 At this time, however, RDP is proceeding as though it still has a Tekkem license because it believes that Stephansen never properly terminated the 2001 License Agreement. According to Dick, RDP has six pending or potential projects that would use Tekkem, and RDP would have to lay off most of its fifteen employees if it could not complete those projects. But RDP may be able to survive, despite such a catastrophic blow.
In mid-October of 2009, all of the characters in this family drama attended WEFTEC, the Water Environment Federation's Annual Technical Exhibition Conference. Ex. D-68 at ¶¶ 113, 120-21. WEFTEC is "the largest conference of its kind in North America and offers water quality professionals from around the world with the best water quality education and training available today." Stip. Facts at ¶ 79. RDP had an exhibit at WEFTEC that included references to Tekkem.
F. Clients Caught in the Middle
Since Stephansen purportedly terminated the 2001 License Agreement and Nordetek signed its own licensing agreement with Stephansen, both Nordetek and RDP have held themselves out as the only Tekkem licensees in the United States. They have also sought the same contracts from the same clients.
Nordetek's first potential order is for the Tekkem slaker in Dallas, but in May of 2009 Paul tried to get this same contract for RDP. Paul Christy Dep. at 149, 307-08. Nordetek has received a letter of intent for the Dallas project, which is worth $4.4 million, but has not yet signed a contract. See Ex. D- 67. Both companies have also sought the Ann Arbor job, and Dick credibly testified that RDP customers all over the country are questioning whether they should work with RDP or Nordetek. See also, e.g., Stip. Ex. 101 (regarding the system in Wichita Falls). Stephansen stepped into the fray and told people connected to the Ann Arbor and Dallas projects that they should contract with Nordetek because he thinks that Nordetek is the current exclusive licensee in the United States. See Stip. Ex. 93 (regarding Dallas) and 95 (regarding Ann Arbor).
According to Brian Steglitz, Ann Arbor's Senior Utilities Engineer and Project Manager for its water treatment project, Ann Arbor's existing lime slaking system has reached the end of its serviceable life. First Brian Steglitz Aff., Ann Arbor Ex. 1, at ¶ 4. For nineteen months, the City has worked on the design of the new system. Id. at ¶ 10. It anticipates receiving $1.4 million in federal stimulus funding, assuming that it can continue to meet rigorous deadlines for starting and completing the project. See id. at ¶ 7, 9. Ann Arbor met the first deadline by awarding the contract for the project on November 16, 2009, and RDP is slated to be a subcontractor for the Tekkem lime slaker and other components.*fn23 But for Ann Arbor to remain eligible for the funding, it must "issue the start work order" and have a contractor on the job site by February 17, 2010. Second Brian Steglitz Aff., Ann Arbor Ex. 2, at ¶ 5. Steglitz estimates that the lime slaking system would need to be delivered in June of 2010. Id. at ¶ 22. According to Steglitz, Paul was the "primary [RDP] representative" who sold the system to the City, and Paul continued to work with Ann Arbor on behalf of RDP as late as August 20, 2009. First Steglitz Aff. at ¶ 12.
Nordetek is also interested in the Ann Arbor job, but the city "does not believe that Paul Christy or Nordetek has the personnel or facilities to prepare the shop drawings or to manufacture the complete system components that are required for the project." Id. at ¶ 20. Paul testified that Nordetek could meet Ann Arbor's deadlines and that Nordetek could get a performance bond for the project because he would put up a 100% cash deposit with the bonding company.*fn24 For this job only, Nordetek has also offered to permit Ann Arbor to use its Tekkem license and contract with RDP to build the equipment. Ex. P-5. The City has apparently rebuffed this offer.
Tekkem is a critical component of Ann Arbor's water treatment plan design. Without it the City would incur significant delays in implementing this project, which would likely result in a loss of the federal stimulus funding. First Steglitz Aff. at ¶¶ 21-23; Second Steglitz Aff. at ¶ 23. If Ann Arbor could not proceed with RDP providing the Tekkem slaker system, it would have to find a new Tekkem provider and would possibly experience construction delays resulting in the loss of the stimulus funding. RDP has agreed to indemnify Ann Arbor regarding the Stephansen licensing issues. First Steglitz Aff. at ¶ 25.
Ann Arbor's concerns cannot be firmly put to rest until this case concludes and, more importantly, Stephansen and RDP resolve their dispute regarding whether RDP is still a Tekkem licensee. But RDP's surety company is awaiting the outcome of the parties' motions for preliminary injunction before deciding whether to provide bonds to RDP for the project. Second Steglitz Aff. at ¶ 12. This is currently a major stumbling block in meeting the upcoming deadlines for the project. Ann Arbor's attorney informed us at the hearing that denying the plaintiffs' motion for preliminary injunction might have a positive effect on the City's continued eligibility for the federal stimulus funding and its efforts to ensure that its residents have safe drinking water. In other words, if we do not affirmatively prevent RDP from providing the Tekkem slaker to the City at this early stage in the litigation, Ann Arbor believes it will make timely progress on the project and remain eligible for the stimulus funding.
G. RDP's Confidential Proprietary Information
Paul admitted that RDP has confidential proprietary information and that he had unfettered access to it while he worked at RDP. RDP is concerned that Paul will use this sensitive information to do projects in the future, but Dick does not believe that Paul has used it yet. At the preliminary injunction hearing, Dick explained that Paul had access, inter alia, to electronic files containing preliminary engineering drawings, which are completed before RDP signs a contract. Having the electronic version -- as opposed to a paper copy -- of those drawings potentially saves hundreds of hours of work in creating the drawings that are done at later stages of the project because they incorporate RDP's resolution of its past mistakes and embody thirty years of the company's work experience.
II. Legal Analysis
As noted, the parties have filed cross-motions for preliminary injunction.*fn25 In its motion, RDP asked for injunctive relief on several grounds, but it produced evidence that suffices only to support its request that we enjoin Paul and Nordetek from competing with RDP. The plaintiffs seek relief pursuant to their Lanham Act claims and ask us to enjoin RDP from (1) claiming that it has a Tekkem license, (2) stating that Nordetek does not have that license, (3) saying that Paul is subject to a two-year NCC with RDP, and (4) "disparaging and misrepresenting Plaintiffs and their products and/or services." Pl. Mot. at 1. We will thus limit our discussion to the NCC and plaintiffs' Lanham Act claims.
Based on the following analysis, we will grant RDP's motion against Paul and Nordetek, and deny Paul and Nordetek's motion against RDP.
A. Preliminary Injunction Standard
In ruling on a motion for preliminary injunction, we must consider*fn26 whether the movant has shown "(1) a likelihood of success on the merits; (2) that it will suffer irreparable harm if the injunction is denied; (3) that granting preliminary relief will not result in even greater harm to the nonmoving party; and (4) that the public interest favors such relief." Child Evangelism Fellowship v. Stafford Tp. School Dist., 386 F.3d 514, 524 (3d Cir. 2004) (internal quotations omitted). The moving party must show that it will suffer irreparable harm that is beyond monetary damages, and we must consider the extent, if any, to which it will suffer that harm. Liberty Lincoln-Mercury, Inc. v. Ford Motor Co., 562 F.3d 553, 557 (3d Cir. 2009). It is not sufficient for the movant to show that irreparable harm "will occur only in the indefinite future." Campbell Soup Co. v. Conagra, Inc., 977 F.2d 86, 91 (3d Cir. 1992). Rather, it "must make a clear showing of immediate irreparable harm." Id. (internal quotations omitted, emphasis in original).
We will first address RDP's motion for preliminary injunction.
B. RDP's Motion for Preliminary Injunction
In its motion, RDP asks us to enforce the NCC and to preliminarily enjoin and restrain Paul for two years from competing with RDP and working for, owning, controlling, operating, or affiliating with Nordetek. The parties have presented extensive evidence and arguments on this point, and, as noted, we will grant RDP's motion on it. But RDP also asks us to issue an injunction regarding, generally speaking, Paul's use and possession of RDP's property, confidential information, and trade secrets. It also requests that we order Paul and Nordetek to account to RDP for any income received as a result of Paul's work with Nordetek. At this juncture, RDP has not provided us with evidence or arguments that are sufficient to support an injunction on either of these issues,*fn27 and we will deny its motion as it relates to them.
1. Likelihood of Success on the Merits Regarding the NCC
"In Pennsylvania,*fn28 restrictive covenants are enforceable if  they are incident to an employment relationship between the parties;  the restrictions imposed by the covenant are reasonably necessary for the protection of the employer; and  the restrictions imposed are reasonably limited in duration and geographic extent." Hess v. Gebhard & Co., Inc., 808 A.2d 912, 917 (Pa. 2002). A restrictive covenant will also be enforced when it is "attached to a contract for the sale of a business" and meets the second and third requirements in Hess.
Piercing Pagoda, Inc. v. Hoffner, 351 A.2d 207, 210 (Pa. 1976). The plaintiffs do not argue that the NCC was unreasonable in duration or geographic extent, so we will not address these matters. The parties executed the 1995 Agreement well after Paul's relationship with RDP as a shareholder and employee began, so the NCC will not be enforced unless Paul received a "corresponding benefit or change in status." Wainwright's Travel Service, Inc v. Schmolk, 500 A.2d 476, 478 (Pa. Super. 1985).
a. Incident to an Employment Relationship or Contract for the Sale of a Business
Plaintiffs argue that the NCC does not meet the first Hess requirement because it was in a shareholder agreement and not an employment contract, but that fact is not fatal to the enforcement of the NCC. In Wainwright's Travel Service, the Superior Court of Pennsylvania held that a restrictive covenant in a shareholder agreement was enforceable because the employee had the opportunity to purchase stock in the company because she was a key employee. Id. The court concluded that the shareholder agreement was therefore "sufficiently related to the employment relationship." Id. Here, Paul's relationship to RDP as an employee and shareholder are intertwined, and it appears that Paul's father made him a shareholder not because he was a key employee but because Paul was his son. But even though the 1995 Agreement was labeled as a "Shareholder Agreement," it addressed issues that the brothers faced in their roles as shareholders and employees. For example, it protected Paul from termination as an employee except for cause, death, or disability. The brothers could only trigger the NCC and the share repurchase provisions by termination of their employment with RDP. For these reasons, RDP is likely to succeed in showing that the 1995 Agreement was "sufficiently related to [Paul's] employment relationship" so that the NCC was ancillary to it.
RDP also contends that the NCC was ancillary to a contract to sell Paul's ownership interest in RDP pursuant to the 1995 Agreement's repurchase provisions. The plaintiffs respond that the 1995 Agreement only discussed the future sale of Paul's interest and that the NCC was therefore not ancillary to a buy-sell agreement. Because we find that RDP is likely to succeed in showing that the NCC was ancillary to Paul's employment relationship with RDP, we need not resolve this dispute.
b. Reasonably Necessary for RDP's Protection
RDP argues that Paul's work with Nordetek threatens its relationships with existing customers and its ability to attract new business in the future. The evidence in the record at this time shows that RDP and Nordetek are competing not only in the same market -- selling equipment for water treatment facilities and providing services to support their installation -- but for the very same clients and projects. Paul himself attempted to get contracts for RDP in Dallas and Ann Arbor while he worked at RDP and then later sought the same work for Nordetek shortly after leaving RDP. Within weeks of resigning from RDP, Paul also signed Nordetek's license agreement to use Tekkem -- clearly a key item of technology for RDP and its business. RDP claims that during Paul's long tenure as a shareholder, executive, and employee at RDP, he built up his technical expertise, industry contacts, and had a reputation in this field. RDP credibly through Dick reports that Paul's actions at Nordetek have already caused it harm and could seriously -- perhaps fatally -- damage the company unless we enjoin Paul from continuing on this path.
Plaintiffs respond that RDP has no legitimate business reason for enforcing the NCC because they believe that RDP and Nordetek are not competitors. They contend that Nordetek's only business is Tekkem slakers and that because RDP no longer has a license from Stephansen, RDP is barred from that business. According to Paul and Nordetek, even if RDP could show that Stephansen wrongfully terminated RDP's Tekkem license, RDP's remedy is not specific performance -- to wit, getting the license back -- but only damages. Again, the dispute between RDP and Stephansen is not before us because it must be submitted to arbitration in London, but we will discuss this argument to dispel the plaintiffs' extravagant claims on this point.
Despite plaintiffs' protests to the contrary, whether RDP is still a licensee, and whether Nordetek's purported license is exclusive, are unquestionably in dispute. Cf. Pl. Post-Hearing Brief at 5 ("The evidence is indisputable that Nordetek -- and not RDP -- has the exclusive license to TEKKEM slaker plants, and any finding otherwise would be without jurisdiction*fn29 and contrary to all of the evidence and RDP's December 18, 2009 testimonial admission."). It is by no means clear that Stephansen has properly terminated RDP's license, and it seems entirely possible that the arbitration panel could conclude that RDP is still a licensee. Furthermore, none of the cases that plaintiffs cite supports their contention that, assuming that RDP is no longer a licensee, it cannot get the license back through the remedy of specific performance.*fn30
But more importantly, although restrictive covenants "should be construed narrowly," All-Pak, Inc. v. Johnston, 694 A.2d 347, 351 (Pa. Super. 1997), the plaintiffs' view of this issue is not just narrow but myopic. In asking us to limit our review of this issue to only Tekkem slakers, Nordetek invites us to see the relevant market -- selling water treatment equipment and providing related services -- with a set of blinders and ignore the reality that Nordetek and RDP are currently pursuing the same jobs. Indeed, Nordetek's reasoning leads to the preposterous conclusion that any company with a proprietary product has no competitors.
We decline to take such a crabbed view, especially in light of the NCC's broad language. That portion of the 1995 Agreement provides that for a period of two years after leaving RDP Paul "shall not engage either directly or indirectly in any manner or capacity whatsoever . . . in any business competitive with the business of the Corporation." 1995 Agreement at § 9(b). It is true that the agreement does not define the phrase "competitive with." But The Oxford English Dictionary defines competitive as "Of, pertaining to, or characterized by competition." III The Oxford English Dictionary 605 (2d ed. 1989). In the realm of commerce, competition is "Rivalry in the market, striving for custom between those who have the same commodities to dispose of." Id. at 604, def. 1(b).
The Pennsylvania Superior Court has defined competition similarly as the "effort or action of two or more commercial interests to obtain the same business from third parties." Omicron Systems, Inc. v. Weiner, 860 A.2d 554, 560 (Pa. Super. 2004) (internal quotations omitted). The court concluded in Omicron that two companies were competitors because they provided their clients with solutions to the same kinds of problems. Id. at 561. The plaintiffs here argue that RDP may no longer supply Tekkem slakers and does not currently market any products that compete with Tekkem. They contend that RDP and Nordetek are therefore not competitors under Omicron. But plaintiffs ignore the fact that RDP is currently marketing Tekkem slakers and may well be doing so lawfully. It is plain that RDP and Nordetek are offering the same solutions to their customers' water treatment problems and that under Omicron they are paradigmatic competitors.*fn31
On the record before us, RDP is likely to succeed in showing that RDP and Nordetek (through Paul) are "striving for [the same] custom" -- because that is, in fact, what they are doing -- and that it has a current legitimate business interest in enforcing Paul's broad covenant not to compete for two years against the family firm.
c. Corresponding Benefit or Change in Status
Plaintiffs also contend that Paul did not receive any consideration for the NCC because the 1995 Agreement did not change his job responsibilities, compensation, or increase his ownership of RDP. RDP responds that the 1995 Agreement benefitted Paul because it increased his job security by limiting RDP's ability to terminate him.
RDP also argues that its promise to purchase Paul's shares was valuable consideration that it believes is now worth more than $500,000. Paul characterizes the share repurchase provisions as a detriment because before the 1995 Agreement he could have resigned as an employee and remained a shareholder. But the parties stipulated that due to Paul's resignation, he "is entitled to have his shares of RDP stock repurchased" pursuant to the 1995 Agreement. Stip. Facts at ¶ 34.
There is no evidence that prior to the 1995 Agreement Paul and RDP were subject to these provisions. Moreover, Rob and Dick also agreed to the NCC, and Paul benefitted from this mutual arrangement because he had the assurance that his interest in RDP was protected from his brothers leaving the company and taking its business with them. Plaintiffs contend that Dick's promise not to compete was illusory because he never planned to leave RDP. But Dick credibly testified that he considered resigning from RDP due to the hostility between him and Paul but decided not to do so precisely because of the NCC.
RDP is likely to succeed in showing that Paul's job protections, RDP's obligation to repurchase Paul's shares upon his resignation,*fn32 and the mutual NCC in the 1995 Agreement were new, and that these obligations and promises were corresponding benefits for Paul's agreement not to compete.*fn33
d. Constructive Termination
Plaintiffs assert that "equity commands" that we not enforce the NCC against Paul because his "value" to RDP at the time of his resignation was "nominal." Pl. Opp. Br. at 20. Their argument is apparently that RDP should not feel threatened by Paul because RDP (read Dick) held him in low esteem by the end of his tenure with the company. This reasoning may have some merit as applied to a low-level employee with little ability to pose a serious threat to the well-being of a former employer. But it has no place here because Paul was an officer, director, and shareholder at RDP who admits that he had unfettered access to its confidential information. And there is no question that Paul and Nordetek actually pose a serious threat to RDP. We will not belabor this meritless argument.
Based on all of the evidence and arguments that the parties have submitted thus far, we conclude that RDP is likely to succeed in showing that Paul's NCC is enforceable and that he is breaching that agreement.
2. Irreparable Harm and Balance of Harm
We have already discussed the harm that RDP has suffered and continues to experience as a result of Paul's actions with Nordetek. Paul claims that we cannot view Nordetek's acquisition of the Tekkem license as harmful to RDP because RDP lost the license before Nordetek acquired it. We find Paul's testimony that he did not discuss the possibility of his firm serving as the Tekkem licensee until he left RDP to be utterly incredible. But even if we treated this fiction as true, it appears that Paul's actions with Stephansen since he left RDP have further poisoned the relationship between Stephansen and RDP and made less likely the possibility of reconciliation and resolution of the issues surrounding the 2001 License Agreement.
But Paul and Nordetek have also harmed RDP more directly by competing for the very same business and causing RDP's current customers to question their ongoing relationship with the company. Under Pennsylvania law, Paul's disruption of RDP's established business relationships, the possibility that RDP will lose new business, which is "inherently unascertainable," and the damage that Paul and Nordetek are causing to RDP's market advantage constitute quintessential irreparable injuries. West Penn Specialty MSO, Inc. v. Nolan, 737 A.2d 295, 299 (Pa. Super. 1999). Unlike Nordetek, which only "employs" Paul, RDP has fifteen employees, and Dick credibly testified that RDP could have to lay off most of them if RDP continues to lose business. On these bases, RDP has demonstrated that the actions of Paul and Nordetek are causing it irreparable injury now and will continue to do so in the immediate future unless we grant RDP's motion.
The plaintiffs argue that if we grant RDP's motion, Nordetek will be forced out of business and that Paul will not be able to work in the only field in which he has been employed since college. But the only real-world effect of Nordetek's potential demise would be harm to Paul as Nordetek's sole owner and employee. At the November 12, 2009 hearing on plaintiffs' motion for a temporary restraining order, we learned that Paul has significant personal wealth, and he told us that he is not personally suffering from any financial distress. Any harm that Paul would suffer from the injunction RDP seeks is, moreover, entirely of his own making. He signed the 1995 Agreement and then resigned from RDP, thereby triggering the application of the NCC. He then promptly founded a business that competes with RDP. Such "self-inflicted" injury will not be considered irreparable. See Caplan v. Fellheimer Eichen Braverman & Kaskey, 68 F.3d 828, 839 (3d Cir. 1995).
The harm for Nordetek and Paul of granting RDP's motion pales in comparison to the palpable harm that the plaintiffs' behavior is causing, and will continue to cause, RDP. The balance of harms thus tips heavily in favor of granting RDP's motion.
3. Public Interest
Nordetek contends that the public interest will be harmed if we grant RDP's motion because no contractor in North America would then be able to provide Tekkem lime slakers. As discussed above, we think this outcome is by no means a foregone conclusion, as RDP may still be a Tekkem licensee. We also cannot predict what action Stephansen may take if we grant the motion, but it is possible that Stephansen may find an entity unrelated to Paul to sell Tekkem in the United States. The parties also make broad arguments regarding the public interest, e.g., that it is generally good to enforce non-compete agreements or that non-compete agreements are disfavored and individuals should be free to conduct business as they choose. There may be merit to these abstract arguments but -- on the issue of whether to enjoin Paul from competing with RDP -- the public interest does not weigh heavily in favor of either side.*fn34
RDP is likely to succeed on the merits, and Paul's conduct is causing, and will cause, irreparable harm in the immediate future unless we grant RDP's motion. The balance of harms weighs heavily in favor of RDP, and at this point the public interest does not tip the scales for either side. Pursuant to Fed. R. Civ. P. 65, we will therefore grant RDP's motion and will enjoin Paul and anyone in active concert or participation with him from competing with RDP. As things now stand, Paul is the only owner and employee of Nordetek, and this injunction will restrain Nordetek from competing with RDP as long as Paul has anything to do with that firm.
C. Plaintiffs' Motion for Preliminary Injunction
Plaintiffs' motion for preliminary injunction is grounded in their Lanham Act claims relating to the Tekkem license, Paul's NCC, and Nordetek's products and services, which plaintiffs have repeatedly contended only involve Tekkem slakers. They must show that if we do not grant their motion they will suffer irreparable and immediate harm. But we will enjoin Paul and everyone in active concert or participation with him --currently including Nordetek -- from competing with RDP in the market of selling equipment for water treatment and providing services related to the installation of such equipment in the United States. The plaintiffs thus cannot show that they will suffer immediate irreparable harm from anything that RDP says about Tekkem, the non-compete, or Nordetek.
RDP argues that once we enjoin plaintiffs they lack standing to assert these claims because they cannot be suffering an injury to business they are barred from conducting. See The Pitt News v. Fisher, 215 F.3d 354, 359 (3d Cir. 2000) ("To demonstrate Article III standing, plaintiffs must demonstrate that they have suffered an injury-in-fact, that the injury is causally connected and traceable to an action of the defendant, and that it is redressable."). But the injunction against Paul and anyone acting in concert with him would last at most for two years -- the NCC's time limit. In view of this long breathing space, the plaintiffs cannot demonstrate that they will suffer immediate and irreparable harm regarding RDP's relevant statements, and we will therefore not grant a preliminary injunction on this basis. But it is premature for us to declare that the plaintiffs will never suffer any injury from RDP's statements, given plaintiffs' at least theoretical possibilities after September of 2011 in selling Tekkem slakers.
We will deny plaintiffs' motion for preliminary injunction because they cannot show that they will in any way suffer immediate and irreparable injury.
Having concluded that RDP is entitled to a preliminary injunction against Paul Christy and Nordetek for violation of § 9 of the Shareholders' Agreement, Fed. R. Civ. P. 65(c) obliges us to consider the issue of "security in an amount that the court considers proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained." As Wright and Miller note, this part of the Rule "is to enable a restrained or enjoined party to secure indemnification for the costs, usually not including attorney's fees, and pecuniary injury that may accrue during the period in which a wrongfully issued equitable order remains in effect." 11A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure, § 2954, at 287 (1995) (footnote omitted).
The problem in this case is determining what, if any, "pecuniary injury" Paul and Nordetek are at practical risk of incurring during the pendency of this preliminary injunction. We know from the hearing that Nordetek, which at the time of the hearing was clearly Paul's alter ego, not only had no employees, but also had no business. The record to date reveals, at its most concrete, a November 11, 2009 "Notice of Intent" with Oscar Renda Contracting, Inc. to Nordetek with respect to a possible $4.4 million water treatment plant expansion in Dallas, Texas. See Ex. D-67.
But we also know from the parties' experience with Ann Arbor that much can happen between an expression of "intent" and the execution of an actual contract. Indeed, for Nordetek and Paul perhaps the most inconvenient truth is that municipalities like Ann Arbor and Dallas oblige contractors to post performance bonds. As Paul readily admitted in his testimony, Nordetek's surety company would oblige him to post one hundred percent security for the Ann Arbor bond, over $1 million, and he could do so. But the Dallas job is worth $4.4 million, and Paul conceded that there is no possible way that he could post even half of that amount from the resources available to him.
The record also confirms that municipalities prefer dealing with firms that actually have employees, and not merely a corporate charter and high hopes. This hard reality is the reason Ann Arbor expressed to us its desire to proceed with RDP rather than with Nordetek.
With such imponderables and contingencies, fashioning a just amount to satisfy the purposes of Rule 65(c) is, in the end, speculative on this record. Taking what we know, which is the possibility that Nordetek may participate in a $4.4 million project with the City of Dallas, and generously assuming (admittedly with no support in the record) a fifty percent profit margin for Nordetek, the worst case scenario for the enjoined parties would be a loss of $2.2 million for, say, a period of one year before our Court of Appeals or this Court could come to the conclusion that this preliminary injunction was improvidently granted. According to today's tables in The Wall Street Journal, and taking the current yield on benchmark two-year government bonds issued by the United States Treasury,*fn35 and applying this risk-free 1.02% rate for one year, represents a maximal interest loss of $22,440. We will therefore condition the preliminary injunction on the posting of security in the amount of $22,440.
We will grant RDP's motion for preliminary injunction as to the NCC, and we will deny the plaintiffs' motion for preliminary injunction. We will order RDP to post $22,440 security pursuant to Fed. R. Civ. P. 65(c).