United States District Court, D. Minnesota
CHARLES F. KNAPP, FAEGRE BAKER DANIELS LLP, FOR PLAINTIFF.
JILLIAN M. FLOWER, JACKSON LEWIS PC, FOR DEFENDANT BRIAN S.
SOTTILE, IV AND BRETT J. BROADWATER, JONES DAY, RICHARD Q.
LIU, JONES DAY, FOR DEFENDANT HARLAND CLARKE CORP.
MEMORANDUM OPINION AND ORDER DENYING DEFENDANTS'
MOTIONS TO DISMISS
R. TUNHEIM CHIEF JUDGE UNITED STATES DISTRICT COURT
Deluxe Financial Services, LLC, (“Deluxe”) brings
this action against Defendants Brian S. Shaw and Harland
Clarke Corp. (“Harland Clarke”) (collectively,
“Defendants”). Deluxe brought claims against
Defendants for misappropriation of trade secrets under the
Federal Defend Trade Secrets Act (“DTSA”), 18
U.S.C. §§ 1836, et seq.; misappropriation
of trade secrets under the Ohio Uniform Trade Secrets Act
(“OUTSA”), Ohio Rev. Code §§ 1333.61,
et seq.; tortious interference; and unjust
move to dismiss those claims under Fed.R.Civ.P. 12(b)(6)
contending that: (1) Deluxe fails to state a claim for trade
secret misappropriation under DTSA and OUTSA, and (2) OUTSA
preempts Deluxe's claims for tortious interference and
the Amended Complaint contains a detailed factual statement
to support a trade secret misappropriation claim and Deluxe
may plead alternative and inconsistent legal theories against
Defendants, the Court will deny Defendants' motions to
and Harland Clarke “are the two largest [financial
institution] check printers in the United States. They are
direct competitors.” (Am. Compl. ¶ 4, Nov. 7,
2016, Docket No. 14.) Deluxe employed Shaw as a business
development executive for 25 years. (Id.
¶¶ 8, 15.) As part of his position, Shaw structured
“sophisticated deal structures and pricing
strategies” to differentiate and enhance Deluxe's
market position. (Id. ¶ 17.)
fulfill these job duties, Shaw had access to Deluxe's
trade secret information relating to “customer pricing
data, production costs, check unit volumes, profitability,
sales analyses, sales strategies, deal structures, sales
plans, ‘key account' data, check program management
techniques, and account details (‘Confidential Sales
Information').” (Id. ¶ 18.)
“This Confidential Sales Information is not publicly
known” and Deluxe invests significant efforts to
preserve its confidentiality. (Id. ¶¶
The Confidentiality Agreement Between Shaw and
2012, Shaw entered into a Non-Competition, Non-Solicitation,
and Confidentiality Agreement (the “Agreement”)
with Deluxe. (Id. ¶ 23; Ex. A to Am. Compl.
(“Agreement”), Nov. 8, 2016, Docket No. 17.) In
pertinent part, Shaw agreed that during his employment and
thereafter to “hold in the strictest confidence and . .
. not disclose, use, [or] publish any of [Deluxe's]
Confidential Information, ” unless Deluxe permitted
otherwise. (Agreement at 2.) The Agreement defined
“Confidential Information” as “information
that was developed, created, or discovered by or on behalf of
[Deluxe] or any of its Affiliates, or which became or will
become known by, or was or is conveyed to [Deluxe], which has
commercial value in [Deluxe's] business and which
[Deluxe] regards as confidential.” (Id. at 2.)
The parties intended the Agreement to ensure Confidential
Information remained at the workplace, as Shaw agreed that
“all of the Confidential Information is and shall be
the sole property of [Deluxe] and its successors and
assigns.” (Id. at 2.)
Shaw Joins Harland Clarke
2014, Deluxe eliminated Shaw's position and advised him
that he would no longer have a position at the company. (Am.
Compl. ¶ 39.) Prior to leaving Deluxe, Shaw forwarded
emails to his personal account regarding various proprietary
details about Deluxe's relationship with a customer,
(id. ¶ 40), and retained “at least nine
USB devices containing confidential, proprietary, and/or
trade secret business files of Deluxe, ” (id.
¶ 41, see also Id. ¶¶ 42-47).
the expiration of his eighteen-month non-competition
agreement, Shaw joined Harland Clarke. (Id. ¶
48.) In the summer of 2016, Deluxe's longstanding
customer circulated a request for proposal
(“RFP”) for a new contract. (Id. ¶
53.) While at Deluxe, Shaw retained information regarding
this customer's pricing and analytics and numerous files
about the customer. (Id. ¶¶ 51-52.)
Harland Clarke and ...