Peter A. Steinmeyer and Lauri F. Rasnick, Members of the Firm in the Employment, Labor & Workforce Management practice, in the firm’s Chicago and New York offices, respectively, co-authored an article in Thomson Reuters Practical Law, titled “Garden Leave Provisions in Employment Agreements.”

Following is an excerpt (see below to download the full article in PDF format):

In recent years, traditional non-compete agreements have come under increasing judicial scrutiny, with courts focusing on issues such as the adequacy of consideration, the propriety of non-competes for lower level employees, and whether the restrictions of a noncompete are justified by a legitimate business interest or are merely a tool used to suppress competition.

Although the Trump Administration’s attitude toward non-compete agreements is unknown, the Obama Administration was disapproving of them. Both the US Department of Treasury and the White House issued reports in 2016 that questioned the widespread use of non-competes and suggested that they hampered labor mobility and ultimately restrained economic growth (see US Department of the Treasury: Non-Compete Contracts: Economic Effects and Policy Considerations (Mar. 2016) and White House Report: Non-Compete Agreements: Analysis of the Usage, Potential Issues, and State Responses (May 2016)). Some states have passed legislation essentially banning non-competes for certain categories of workers, such as low-wage workers in Illinois (820 ILCS 90/1) and technology sector workers in Hawaii (Haw. Rev. Stat. § 480-4(d)). In other states, such as California, almost all post-employment non-competes are unenforceable (Cal. Bus. & Prof. Code § 16600-16602.5).

With this background, employers are seeking alternatives to traditional non-compete agreements to protect their proprietary information and customer relationships. …

Download the full article in PDF format.

California has always been a challenging jurisdiction for employers in terms of limiting unfair competition by former employees and protecting trade secrets. However, employers in the state can significantly enhance their ability to protect their business interests in these areas with a little planning and strategic thinking.

In this issue of Take 5, we look at some proactive steps that employers can take to prevent unfair competition by departed employees and protect trade secrets from misappropriation:

Read the full Take 5 online or download the PDF.

In non-compete matters, it is often said that trial judges dislike enjoining individuals and will go out of their way to avoid doing so. A recent decision by the Florida Court of Appeals, Allied Universal Corporation v. Jeffrey B. Given, may be a good example of such a situation – as well as an example of an employer that took an immediate appeal and got the relief it wanted.

In Allied Universal, the trial court denied a motion for a preliminary injunction to enforce the terms of a non-compete with a former employee, even though the employee failed to rebut evidence that his non-compete was supported by legitimate business interests and that his former employer would suffer irreparable harm in the absence of an injunction.  Here, the legitimate business interests at issue were substantial relationships with specific prospective or existing customers and various types of proprietary information and pricing strategies.

Rather than presenting rebuttal evidence, the employee argued that because he had not yet begun to actively compete, he had not yet breached his non-compete.  Following an evidentiary hearing, the trial court denied the motion for a preliminary injunction, “finding only that Allied failed to show irreparable harm or absence of an adequate remedy at law.”

In contrast, based on the unrebutted evidentiary record, the appellate court held that the burden shifted to the employee to establish the absence of irreparable harm, and that because the employee failed to provide such evidence, the trial court’s denial of an injunction was an abuse of discretion.

While it is impossible to say what degree human empathy played in the trial court’s denial of the preliminary injunction, prudent practitioners in non-compete cases should never lose sight of that reality. They should also not forget that denials of requests for injunctive relief are immediately appealable, and if a request is justified under the facts and the law, an immediate appeal may be in order.

Insurance coverage is not something which comes to mind when thinking about trade secret misappropriation. In fact, since this blog was started in 2009, I cannot recall a single post about an insurance coverage issue.

That being said, one of the first things prudent defense counsel will do when a client is sued for alleged trade secret misappropriation is to instruct their client to notify their insurance carrier and inquire as to whether there is coverage for some or all of the claims. Sometimes there is; sometimes there isn’t.  However, the prudent course of action is always to play it safe and ask.

In a recent decision issued by Judge Dow in the U.S. District Court for the Northern District of Illinois, Sentinel Insurance Company, LTD v. Yorktown Industries, Inc., the defendant in what seems to have been a garden variety trade secrets misappropriation case  – Yorktown — demanded that its insurance carrier defend and indemnify it under its insurance policies.  The carrier denied coverage and denied having any duty to defend, and then brought a declaratory  judgment action seeking vindication for its position.

In the underlying lawsuit for which coverage and a defense was requested, Yorktown was sued for violation of the Uniform Trade Secrets Act, intentional interference with contractual relations, intentional interference with prospective business advantage, unfair competition, and civil conspiracy (i.e., claims commonly seen in these types of cases).

Yorktown requested indemnification under an insurance policy which provided coverage for claims for, among other things, “personal and advertising injury.” Yorktown’s argument was premised on the fact that it had been accused of stealing another’s “advertising idea.”

Judge Dow made short work of this claim, holding that Yorktown had merely been accused of stealing a customer list and sales information and wrongly using that information, and that this alleged misconduct did not amount to an allegation that Yorktown copied an “advertising idea” or copied trade secrets in an advertisement. Additionally, among other things, Judge Dow noted that the policy contained an express exclusion for claims predicated on the alleged misappropriation of a trade secret.

In these types of disputes, a common instance in which there may be coverage is where a breach of fiduciary duty is alleged, or where there is a claim against a director or officer and a “D & O” policy is implicated. Here, there was no mention of such claims.

While Yorktown came up short before Judge Dow, the prudent course of action in every trade secrets case is to notify the carrier and inquire about coverage.   Because insurance policies (and lawsuits) come in all sizes and shapes, sometimes there is coverage; sometimes there isn’t.

In Reed v. Getco, LLC, the Illinois Court of Appeals was recently faced with an interesting situation: under a contractual non-compete agreement, the employer was obligated to pay the employee $1 million during a six month, post-employment non-competition period.  This was, in effect, a form of paid “garden leave” —  where the employee was to be paid $1 million to sit out for six months – perhaps to finally correct his golf slice or even learn the fine art of surfing.  It was a win-win situation that seemingly would be blessed by most courts; it was for a reasonable length of time, and the employee was set to be paid very handsomely for sitting out.  Accordingly, it is doubtful that most judges would have had an issue with it.

Yet here, the employer apparently had second thoughts – and just over a week after the employee resigned, the employer notified the employee that it was waiving the six month non-compete, allowing him to work anywhere, and therefore not paying him any portion of the promised $1 million.

Some non-compete agreements have express clauses allowing an employer to do just this – to shorten the non-compete and thereby avoid contractual non-compete payments — but the Court’s opinion makes mention of no such a clause here.

According to the Court, the employer attempted to justify the non-payment on several grounds.

First, the employer argued that because the non-compete itself was to the employer’s benefit, it was free to waive the non-compete period and not make the accompanying $1 million payment. But the Court effectively said, “whoa, not so fast,” noting that the non-compete agreement also had a clause stating that there could be no waiver of any contractual provision unless “signed by the party against whom the waiver or modification is enforced.” Here, the waiver was being enforced against the employee, but the employee signed no such written waiver and therefore the purported waiver was ineffective.  Moreover, the Court found that there was no language in the agreement indicating that actual enforcement of the non-compete provision was a condition precedent to the $1 million payment.

Second, the employer argued that because there was a provision in the non-compete agreement which allowed the employer to waive the restriction if requested by the employee, the employer had the discretion to modify all of the noncompete restrictions, including the $1 million payment obligation.  Again, the Court found that this interpretation was not supported by the plain and unambiguous language of the provision, which only applied to a situation where the employee requested a waiver.

Finally, the employer argued that the employee had a duty to mitigate, and could not simply spend six months doing as he chose while collecting $1 million from his former employer. The Court held that when an employer breaches an employment contract, the employee generally has a duty to reasonably mitigate damages. However, here the promise was that the employee would not engage in competitive activities for six months and, in exchange, the employee would be paid the promised sum.  The employee abided by his non-compete obligation and sat out for six months, so the Court held that the payment was due.

What should employers take from this decision? Because provisions obligating payment during non-compete periods can impose significant costs on the employer, employers must realistically assess what they are willing to pay. One option to control such costs is to make explicit in the agreement that the employer has the right to shorten any non-compete or garden leave period, and that the employer also has an accompanying right to proportionately reduce or eliminate any accompanying payment obligation. The absence of such an express contractual authorization was the death knell for Getco in this case.

Illinois Capitol BuildingIllinois recently became one of the first states to ban non-compete agreements for low wage workers when it passed the Illinois Freedom to Work Act. The law, which takes effect on January 1, 2017 and applies to agreements signed after that date, bars non-compete agreements for workers who earn the greater of 1) the Federal, State, or local minimum wage or 2) $13.00 an hour.  At present, because the State minimum wage is below $13.00 per hour, $13.00 an hour is the operative figure in Illinois.

While Illinois is one of the first states to enact this type of blanket ban on non-competes based on the employee’s salary status, in other states, including New Jersey and Maryland, legislation based on eligibility for unemployment compensation has been proposed. Moreover, as we have previously blogged, the New York Attorney General has sought to prohibit companies from agreeing to non-competes with low wage workers.  The White House has also weighed in on the issue of non-compete agreements for low wage workers, questioning whether they protect  legitimate business interests or instead merely hamper labor mobility.

In sum, the political winds are clearly blowing against non-compete agreements for low-wage workers. Employers should be wary of attempting to secure stability in their low wage workforce through non-compete agreements and employers in Illinois should review and, if necessary, revise their employment agreements in light of this new law.

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (“DTSA”), which became effective immediately. The DTSA provides the first private federal cause of action for trade secret misappropriation, and it allows parties to sue in federal court for trade secret misappropriation—regardless of the dollar value of the trade secrets at issue.

Although the DTSA’s remedies largely overlap with those in the 48 states that have adopted some version of the Uniform Trade Secrets Act, the DTSA will nevertheless significantly alter how trade secret misappropriation cases are litigated. Additionally, the DTSA has broad whistleblower protections, and it requires that employers provide certain notices of these whistleblower protections in employment-related agreements that govern trade secrets or other confidential information entered into or amended after May 11, 2016.

For more information concerning the impact of the DTSA on employers, please see our “Q&A” on this topic, published by the Practical Law Company.

Employers seeking to require an existing employee to sign a restrictive covenant should consider current litigation trends surrounding what constitutes “adequate consideration.” Under the traditional rule followed by a majority of states, continued employment, standing alone, is adequate consideration for a restrictive covenant signed by an at-will employee. Several courts, however, have recently reexamined this issue, so employers must be aware of differences among the states as to whether some consideration beyond mere continued at-will employment is required.

Fifield v. Premier Dealer Services, Inc.

For example, the Illinois Appellate Court held in Fifield v. Premier Dealer Services, Inc.,[1] that, absent other consideration, at least two years of continued employment are required to constitute adequate consideration for a restrictive covenant. Under Fifield, the two-year rule applies regardless of whether the employee signed the restrictive covenant as a new or existing employee and regardless of whether the employee voluntarily resigned or was fired.

Although Fifield has been followed in subsequent Illinois state appellate decisions,[2] multiple federal district courts in Illinois have refused to apply Fifield’s bright line, two-year rule. For example, last month, the U.S. District Court for the Northern District of Illinois concluded that the Illinois Supreme Court, which has not yet ruled on the issue, “would reject a two year bright-line rule in favor of a fact specific test.”[3] Therefore, while “[t]wo years may be sufficient to find adequate consideration,” “it is not always necessary,” particularly when considering other factors, like compensation, raises and bonuses, and the terms of the employee’s termination.[4]

Differing State Rules

Since Fifield, other state courts have similarly grappled with the issue of what constitutes adequate consideration for a restrictive covenant. Kentucky, North Carolina, and Pennsylvania courts each have issued decisions requiring some consideration beyond mere continued employment to enforce a non-compete.[5]

In contrast, the Wisconsin Supreme Court recently held in Runzheimer Int’l, Ltd. v. Friedlen,[6] that employers may require existing at-will employees to sign non-compete agreements without offering additional consideration beyond continued employment, although the court did not provide clear guidance as to the period of time that the employment must continue after the non-compete is signed.

Courts in New York and New Jersey have been relatively consistent regarding the required consideration for a restrictive covenant. Both states consider continued employment to constitute adequate consideration for a restrictive covenant signed by a current employee, provided that the employer forbears from discharging the employee for a “substantial” period of time.[7]

What Employers Should Do Now

In light of this judicial focus on appropriate consideration and given the number of states that have recently addressed adequacy of consideration, employers nationwide should monitor this issue—even in states where the law is currently stable.

In terms of addressing this issue, employers should consider these options:

  1. Where there is a plausible nexus to a state with more favorable laws regarding the enforceability of restrictive covenants, include a choice-of-law provision designating the law of that state (e.g., the state where the employer’s headquarters is located or where the employee actually works). Courts generally enforce contractual choice-of-law provisions unless they violate the fundamental public policy of a state with a materially greater interest in the situation or where the parties and contract do not have a substantial relationship with the chosen state.
  2. Provide consideration in addition to an offer of employment or continued employment. Examples of such possible “additional consideration” include a cash payment, stock options, training, education, a raise, additional paid time off, guaranteed severance, or a promotion. In the absence of judicial guidance, it would be prudent to be as generous as possible and to provide consideration that is more than de minimis. Regardless of the “additional consideration” ultimately decided upon, the restrictive covenant itself should both explicitly recite the consideration provided to the employee for signing it and further provide that the employee acknowledges the consideration and its adequacy.
  3. Agree to continue the employee’s salary during any restricted period, thereby alleviating concern about consideration being illusory.
  4. Consider trying to evade consideration concerns entirely by having employees agree to a “garden leave” or “required notice” clause, rather than a traditional non-compete or non-solicit clause. Under such a provision, an employee is required to give advance notice of his or her resignation (e.g., 30 – 90 days) and, during the notice period, the employee remains on your payroll and owes you a fiduciary duty of loyalty (and therefore cannot work for a competitor during that period). Because the employee remains on the payroll and because garden leave provisions tend to be shorter in duration than traditional restrictive covenants, they are less onerous to the individual and thus more likely to be enforced.

A version of this article originally appeared in the Take 5 newsletter “Restrictive Covenants: Do Yours Meet a Changing Landscape?”

[1] Fifield v. Premier Dealer Services, Inc., 2013 IL App. (1st) 120327.

[2] See, e.g., Prairie Rheumatology Assocs., S.C. v. Francis, 2014 IL App. (3d) 140338; McInnis v. OAG Motorcycle Ventures, Inc., 2015 IL App. (1st) 142644).

[3] R.J. O’Brien & Assocs., LLC v. Williamson, No. 14 C 2715, 2016 U.S. Dist. LEXIS 32350, at *7 (N.D. Ill. Mar. 10, 2016).

[4] Id. at *7-9.

[5] See, e.g., Charles T. Creech, Inc. v. Brown, 433 S.W.3d 345 (Ky. 2014) (mere continued at-will employment does not constitute adequate consideration); Emp’t Staffing Grp., Inc. v. Little, 777 S.E.2d 309, 314 (N.C. App. 2015) (upholding as adequate a $100 payment made to defendant in conjunction with signing a mid-employment non-compete); and Socko v. Mid-Atl. Sys. of CPA, Inc., 126 A.3d 1266, 1275 (Pa. 2015) (an existing employee must receive some “new” and valuable consideration in exchange for signing a mid-employment non-compete agreement, even where the employee expressly “inten[ded] to be legally bound” by the agreement).

[6] Runzheimer Int’l, Ltd. v. Friedlen, 2015 WI 45 (Wis. 2015).

[7] See Int’l Paper Co. v. Suwyn, 951 F. Supp. 445, 448 (S.D.N.Y. 1997) (under New York law, continued employment for a “substantial period” following the execution of the agreement is sufficient consideration for a restrictive covenant); Hogan v. Bergen Brunswig Corp., 153 N.J. Super. 37, 43 (Super. Ct. App. Div. 1977) (continued employment is sufficient consideration to support a restrictive covenant found in an original or post-employment contract).

Peter A. Steinmeyer

In Bridgeview Bank Group v. Meyer, the Illinois Appellate Court recently affirmed the denial of a temporary restraining order (“TRO”) against an individual who joined a competitor and then, among other things, allegedly violated contractual non-solicitation and confidentiality obligations.

As a threshold matter, the Appellate Court was troubled by what it described as Bridgeview’s “leisurely approach” to seeking injunctive relief.  The Appellate Court noted that Bridgeview filed the lawsuit three months after Meyer joined a competitor, waited two more weeks to file a motion for a TRO, and then did not notice its motion for a TRO as an emergency motion —  instead waiting to present the motion on the trial court’s regular motion call.  The Appellate Court emphasized that Bridgeview did not offer any explanation for its slowness to act and explained that “[i]f, as Bridgeview now contends, Meyer’s possession of the contact list, standing alone, is an obvious breach of his confidentiality agreement, we can conceive of no reason why Bridgeview would take such a leisurely approach to protecting that information.”

Although the Appellate Court explained that Bridgeview’s delay, standing alone, did not warrant denial of the TRO, “it was a relevant consideration.”

But that delay in acting was just one of many noted problems with Bridgeview’s case.  Starting with Bridgeview’s complaint, the Appellate Court explained it was lacking necessary detail:

there are virtually no well-pled facts in Bridgeview’s complaint regarding information Meyer allegedly took with him or customers he solicited after he left.  Rather, the complaint is replete with nonspecific and conclusory allegations.  For example, Bridgeview alleged that it had developed ‘unique marketing strategies, processes and information’ without ever describing, even generally, the nature of those strategies, processes or information or what made them ‘unique’ in the banking industry.

The Appellate Court further wrote that “[m]onths after it terminated Meyer, Bridgeview should have been able to identify specific customers it had lost and with which Meyer interacted during his tenure, if there were any.”  The Appellate Court added that “Bridgeview’s failure to identify in its complaint even one customer or describe with any specificity the confidential information used or disclosed is inexplicable and, hence, insufficient.”

The Appellate Court then turned to whether the additional materials submitted by Bridgeview at the TRO hearing were sufficient.  Here, the Appellate Court held that e-mails and attachments that were not referenced in Bridgeview’s verified complaint and which were not supported by any affidavits were merely “unverified allegations of wrongdoing” which “the trial court could properly have refused to consider.”

Nevertheless, because the trial court did consider these, so, too, did the Appellate Court.  The primary focus of the trial court was on a so-called “customer list.”  The Appellate Court held that “while certain information on the list may be ‘confidential’ in the sense that it was unknown outside the bank, Bridgeview made no preliminary showing that the information was of any particular value to Meyer or his current employer.”  Moreover, the Appellate Court explained that “while, under appropriate circumstances, a customer list can qualify as a trade secret, there is no per se rule affording it such status.”  Here, Bridgeview “made no showing that it had a protectable interest in its SBA customer base.  Other than a newsletter describing its ‘loyal’ customers, Bridgeview provided no evidence as to the resources devoted to acquiring and retaining customers or the longevity of their relationships with the bank.”

As for alleged violations of Meyer’s confidentiality agreement, the Appellate Court held that the only evidence presented involved a past violation; there was no “indication that the threat of Meyer’s use or disclosure of confidential information was ongoing.”

Ultimately, the Appellate Court concluded that Bridgeview failed to establish either a likelihood of success on the merits or that it would suffer irreparable harm in the absence of a TRO.

Practitioners can take several lessons from this case.  First, when it comes to requests for injunctive relief, time is of the essence.  Second, when drafting a complaint, even though a plaintiff must take care not to unwittingly publish trade secrets or other confidential information, enough detail must be provided to establish the necessary elements for injunctive relief.  Finally, to justify the powerful remedy of an injunction, the requesting party must be able to demonstrate imminent harm, and its claims must be supported by competent evidence.

Readers of this blog know that long settled understandings regarding what constitutes adequate consideration for a restrictive covenant in Illinois were turned upside down when the First District Appellate Court in Illinois held in Fifield v. Premier Dealer Services Inc., 2013 IL App. (1st) 120327 that, absent other consideration, two years of employment are required for a restrictive covenant to be supported by adequate consideration, regardless of whether the covenant was signed at the outset of employment or after, and regardless of whether the employee quit or was fired.

The Illinois Supreme Court declined to hear Fifield, but at least three federal district court judges in Illinois have refused to apply Fifield.

Just recently, another federal district court judge in Illinois also refused to apply Fifield.  This time it was Judge Robert M. Dow, Jr., who held in Traffic Tech, Inc. v. Kreiter, Case No. 14-CV-7528 (N.D. Ill. Dec. 18, 2015), that the “Illinois Supreme Court is not likely to adopt a two-year, bright line rule in assessing whether an employee was employed for a ‘substantial period of time’ so as to establish adequate consideration to support a post-employment restrictive covenant.”   The essence of Judge Dow’s ruling is that Fifield is a mis-reading of Illinois law, and that “Illinois law does not require a strict application of the two-year rule in assessing the enforceability of a non-solicitation clause (or any similar restrictive covenant).”

Because the case was before him on a motion to dismiss, Judge Dow did not ultimately rule on whether the defendant had received adequate consideration.

Given the split between the Illinois appellate court and at least four Illinois federal district court judges over the merits of Fifield, this will remain a hot issue for Illinois employers.   Unless and until the Illinois Supreme Court weighs in, Illinois employers hoping to enforce a restrictive covenant within two years after the signing date should be prepared to distinguish Fifield factually or legally.