A recent New York case suggests that trade secrets may be harder to keep these days because competitive information that used to be proprietary is now easily found on the internet through business sites, such as LinkedIn and Bloomberg. This case also demonstrates the importance of proper business planning to protect valuable, confidential information so that it doesn’t run off with your employees when they leave.
The case is Sasqua Group, Inc. v. Courtney (see link to order provided below), pending in a federal district court in New York. It involves a business dispute between two individuals who ran Sasqua Group, an executive search firm that specializes in the financial services industry. Christopher Tors, President of Sasqua Group, hired Lori Courtney in 2000. Courtney apparently performed well, and by 2009 was equally sharing Sasqua Group’s profits and losses with Tors. At Sasqua Group, Courtney, Tors, and other employees utilized an electronic database that contains client information, including contact information, hiring preferences, resumes and histories of prior business dealings.
In early 2010, Courtney informed Tors that she was leaving Sasqua Group to start her own competing executive search firm. Although Tors and Courtney negotiated an exit plan for Courtney, Tors was surprised to learn that Courtney had apparently begun contacting Sasqua Group clients within a week after her resignation. Tors then sued Courtney and asked the Court for an injunction preventing her from (1) using or disclosing any of Sasqua Group’s confidential information (i.e., its client database), and (2) contacting Sasqua Group’s clients.
How LinkedIn and Other Business Sites Can Make It Harder to Keep a Trade Secret
Because Courtney was not bound by a non-solicitation or confidentiality agreement with Sasqua Group, Tors had to seek protection of Sasqua Group’s client database as a trade secret (which is a protective status conferred by law even without a confidentiality agreement). A client or customer list can qualify as a trade secret if a business has expended a substantial effort to develop the list and has taken steps to guard the secrecy of the list, and if the list contains information that is not otherwise readily available to the public.
At a court hearing, Courtney was able to show that Sasqua Group’s client database was not a trade secret because the client information was readily available on the internet. Courtney did this by walking the judge through a hypothetical research assignment using a computer, where she identified a prospective financial services client and then found the proper decision-maker and his contact and other information. She accessed services including LinkedIn and Bloomberg. Based in part on her demonstration, the court denied Tors’ request for an injunction because the client database did not qualify as a protected trade secret.
The Sasqua Group case does not mean that the increasing availability of business information on the internet has made it impossible for client lists to be protected as trade secrets. Instead, it has limited application to other situations, for several reasons. First, the financial services industry is somewhat unique with regard to the amount of industry information that is readily available on the internet. While other professions, such as lawyers, doctors, and accountants may also have a large amount of information available on the internet, this is not the case for many businesses and industries, such as exterminators or cleaning services whose customer lists often have significant value for that reason.
Second, the court’s opinion shows that the judge was less than impressed with Sasqua Group’s handling of its client database as a supposed trade secret. Among other things, the court found that: (1) Tors may have simply taken the database from his prior employer, rather than creating it at Sasqua Group; (2) the database included outdated information that was more than 10 years old; and (3) Sasqua Group had failed to guard the secrecy of the database by granting access to non-employees of Sasqua Group and even to Courtney after she had announced her resignation. Had Sasqua Group done a better job of compiling and guarding its database, the court might have reached a different decision.
Learning from Sasqua Group: Take Basic Steps to Protect Your Confidential Information
It didn’t have to be so hard. A relatively small up-front investment by Sasqua Group in proper legal planning could have avoided the legal fees and headaches that surely came with its lawsuit against Courtney. If Sasqua Group had required its employees to sign confidentiality agreements that protected its client database, it could have prohibited Courtney and others from copying or using the database after leaving Sasqua Group. Throw in a non-solicitation agreement and Sasqua Group also could have limited Courtney’s ability to solicit and call on its customers for several years (at least under Georgia law).
(Access the Court's decision: Download Order )