Every business in this, the Information Age, is highly dependent on confidential and proprietary information. As many design and creative professionals know, a design business is often based on intimate, personal relationships with clients. As a result, relationships are built upon a high degree of trust and the professional reputation of the designer. In addition, the designer brings a host of regular vendors and proprietary skills, knowledge, experience, including private and confidential information about clients, used for operating the Business. It is not surprising that businesses will seek to prevent disclosure of business, technical and financial information (including information relating to clients, employees and vendors, as well information an employee learns during her employment.
Do I need a Non-solicitation agreement for my Design Business?
Increasingly, I am being asked by clients to prevent departing employees from using proprietary and confidential information and form poaching clients and employees. These non-disclosure or non-solicitation provisions seek to prevent an employee from encouraging or soliciting any client, employee, vendor, or contractor to leave. Unfortunately,
Restrictive Covenants Are Hard to Enforce!
Post-employment restrictive covenants are carefully scrutinized by Illinois courts because they operate as partial restrictions on trade. Fifieldv. Premier Dealer Services, Inc., 2013 IL App (1st) 993 N.E.2d 938 (citing Cambridge Engineering, Inc. v. Mercury Partners90 BI, Inc., 378 Ill.App.3d 437, 447 (2007) ). In order for a restrictive covenant to be valid and enforceable, the terms of the covenant must be reasonable. It is established in Illinois that a restrictive covenant is reasonable only if the covenant (1) is no greater than is required for the protection of a legitimate business interest of the employer, (2) does not impose undue hardship on the employee, and (3) is not injurious to the public. Reliable Fire Equipment Co. v. Arredondo, 965 N.E.2d 393 (2011). The courts consider the unique factors and circumstances of the case when determining the reasonableness of a restrictive covenant. Millard Maintenance Service Co. v. Bernero, 566 N.E.2d 379 (1990). However, before even considering whether a restrictive covenant is reasonable, the court must make two determinations: (1) whether the restrictive covenant is ancillary to a valid contract; and (2) whether the restrictive covenant is supported by adequate consideration. Fifield, 993 N.E.2d 938. Absent adequate consideration, a covenant, though otherwise reasonable, is not enforceable. Id. ¶ 14 (citing Brown & Brown, Inc. v. Mudron, 887 N.E.2d 437 (2008) ); see also Millard, 566 N.E.2d 379.
For most businesses, enforceability of such covenants turns on the concept of “consideration.” The current Illinois authority on “consideration” is Fifieldv. Premier Dealer Services, Inc., 2013 IL App (1st) 120327. In Fifield, the Illinois appellate court noted that Illinois courts have repeatedly held that there must be at least two years or more of continued employment to constitute “adequate consideration” in support of a restrictive covenant. The court also clarified the process by adding that “Fifield [did not overrule or modify] Brown, which engaged in a fact-specific approach in determining consideration.
As a general rule, courts do not inquire into the adequacy of consideration. However, postemployment restrictive covenants are excepted from this general rule because “a promise of continued employment may be an illusory benefit where the employment is at-will.” Most design businesses have at-will employees.
Fifield is equally important for both what it says and for what it does not. Clearly employment alone – any less than two years duration – is NOT adequate consideration. However, the Fifieldcourt also stated that there could be other or additional factors such as an “added bonus in exchange for this restrictive covenant, more sick days, some incentives, [or] some kind of newfangled compensation,” that could be considered additional compensation that could support enforcement of the covenant.
Despite the recognition that the bar is set high for the amount of consideration necessary to enforce restrictive covenants, it makes sense to include them in your agreements with those who work for you.
In addition to the non-solicitation language, one should create a strong and broad definition of protectable proprietary and confidential information. While it may not always be possible to stop a former employee from directly competing against you, it is possible to prevent said employee from using your own proprietary and confidential information against you.
In today’s world, business is no longer about simply having an online presence. Digital business is transactional and social across platforms and networks across thew globe. The previous model of one-to-one transactional business relationships has evolved to one that is reciprocal, collaborative and highly interactive.
This new level of engagement is not without risks. As businesses expand into new online areas for marketing and commerce, businesses should be aware of a myriad of laws and risk areas implicated when one conducts business online. Business lawyers must be familiar with Technology Law.
There are a wide variety of services around the most common types of content and businesses need legal disclaimers, protection of intellectual property rights and other ways to limit liability.
Generally, the key areas and issues are:
Trade & Commerce Issues
- Advertising & Promotions Laws (these vary by state)
- Affiliate Marketing Agreements/Relationships
- Federal Regulatory Guidelines
- Industry Regulations & Guidelines
- CAN-SPAM Act
- Limits of Liability
- Sales & Taxation/Clarifying Nexus Confusion
- Choice of Law/Forum
- Insurance Law
- Website Representations and Warranties
Intellectual Property Issues
- Copyright & Digital Millennium Copyright Act
- Defamation/Free Speech
- Trademark Law
- Unfair Internet Business Practices Such as Domain Name Hijacking & Cybersquatting
- Anti-cybersquatting Consumer Protection Act
- Patent Law
- Trade Secrets
Privacy & Security Issues
- Credit Cards / Transaction Processing
- E-Payment and Credit Card Security/Privacy
- Children’s Online Privacy Protection Act
- Data Breach Notification Laws
- Data Privacy Laws
Human Resources & Employment Issues
- BYOD & Computer Usage Guidelines for Employees
- Employment and Labor Laws
- Social Media Guidelines for Employees
We look forward to the opportunity to discuss any questions you may have regarding the range of business, technology and intellectual property services we offer. Our law office is based in Chicago, Illinois. Please feel free to call us at (866) 734-2568 should you have any questions.
Ever had an Interior Design client refuse to pay, not give you credit for your work, or use your design without actually hiring you? As unfair as these situations sound, the truth is they happen often. Poor planning, client management or incomplete contracts account for most of these situations. Get expert legal advice from a Chicago-based lawyer who understands the ins and outs of the design industry and learn how to address some of the biggest risk factors designers face today and how your contract can (and more importantly, should) protect you. Follow the link for access to the free informational prevention about improving your interior design contracts.
Have you ever had a client refuse to pay a bill, not give you credit for your work, or use your design scheme without hiring you? As loathsome as these situations sound, the reality is that they happen more often than we like to admit. The best way to avoid these issues is to arm yourself with an airtight contract. For this task, we’ve enlisted David Adler, a Chicago-based lawyer who understands the ins and outs of the design industry, to serve as your legal expert for the morning. He will address some of the biggest risk factors interior designers face today and how your contract can (and more importantly, should) cover you. You’ll leave with a better understanding of how you can tighten up your existing contract so you don’t have to learn the hard way.
Interior Design can be a competitive business. It is no secret that one designer may begin a project, only to have it completed by another, including a former employee. As a result, Designers need to be vigilant about protecting both their designs and relationships. The case of Hunn v. Dan Wilson Homes, Inc., 13-11297, 14-10365, 114 qUSPQ2d 2002 (5th Cir 2015) offers several lessons for Designers.
Ben Lack, who was employed as a draftsman at the Plaintiff architectural design firm Marshal Hunn Designs (HD), resigned from his job while in the middle of a project for the firm’s client, Dan Wilson Homes, Inc. (DWH). After Lack’s resignation, Lack was hired by DWH to complete the project. HD sued Lack and DWH alleging that they secretly agreed in advance with DWH to cut HD out of the business. The court ruled in favor of Lack (and DWH) finding they never entered into any “secret agreement” and there was no merit to the eight other legal claims, including copyright infringement and false designation of origin under the Lanham Act.
DWH is a custom home construction company. DWH contracted with HD to produce plans for four (4) custom homes. DWH wanted the plans drafted by Lack. Lack was the only HD employee who worked on the four custom homes for DWH and HD’s only representative at all weekly meetings with respective homeowners.
While the home construction projects were still underway, Lack informed HD of his desire to resign. Lack also requested by email that a friend of his convert some of the project files into AutoCAD versions. This conversion was required because Lack maintained his own copy of AutoCAD software on his home computer.
HD permitted draftsman to take home files because they often worked on projects on their own home computers as well as work computers. Lack had permission to work on the files at home.
After Lack’s employment ended, HD ask Lack to return physical files related to the project, but not the AutoCAD files.
The relationship between DWH and HD deteriorated. DWH offered to pay HD a prorated amount for the work completed up to the date of termination of Lack. HD refused. DWH later tendered payment for the full contract price, even covering items and services that had not been completed.
HD declined to accept payment and responded by filing a complaint alleging eight causes of action: 1) copyright infringement, false designation of origin under the Lanham Act, 3) breach of contract, 4) breach of fiduciary duty, 5) breach of covenant not to solicit, 6) tortious interference, 7) violation of the computer fraud and abuse act, and 8) conspiracy.
During his deposition, Lack indicated that he believed he would have had at least two more weeks of employment after tendering his notice of resignation, and that he would be able to complete the plans. DWH also believed that Lack would complete the plans under the employment of HD.
The District Court granted summary judgment in favor of the defendants Lack and DWH on all claims. HD appealed the judgment. The appellate court affirmed the District Court’s decision.
The District Court found that there was no breach of contract because DWH’s only duty was to pay for the services which he offered to do.
The District Court found there was no breach of fiduciary duty because any duty terminated upon termination of employment, and Lack did not disclose trade secrets or any confidential information. Although HD alleged that the AutoCAD files were confidential and proprietary information, the court held that they were not because HD had disclosed them to Lack without restriction.
The District Court found that there was no violation of the computer fraud and abuse act because Lack never exceeded his authority. HD routinely permitted employees to take files home and put them on their personal computers.
Although Lack had a non-complete clause in his at-will employment agreement, the Court found there was no violation because the clause was unenforceable. The clause states “in the event you leave or are separated from Hunn Designs’ employment, you agreed not to solicit, either directly or indirectly, business from, or undertake with any customers serviced by you while the employment of Hunn Designs, or any other Hunn Designs customers for a period of two years thereafter.”
The District Court held the non-compete clause was unenforceable do to a lack of independent consideration. Continued employment in at-will agreement is illusory.
The District Court ruled that even if the drafts of house designs were copyrightable, there was no violation of copyright because of the existence of an implied license authorizing use of the designs.
The court found particularly interesting “the fact that the home owners themselves essentially came up with their design ideas and sought to have those self designed homes built [after their ideas were] placed into the drafting stage.”
The District Court cited the 7th Circuit case of I.A.E., Inc. v. Shaver 74 F.3d 768 (7th Cir. 1996) for the proposition that an architect in a similar situation had granted an implied license. Even though the architect in Shaver testified that he did not intend for use of the drawings past the drafting stage unless he was the architect on the project, this was not supported by the record.
The court found there was no violation of the Lanham ask prohibition against false designation of origin, because there was no evidence that use of the plans had a substantial economic effect on interstate commerce, as required by the Lanham Act.
Based on my review of the court’s opinion, there are potentially three (3) things the Plaintiff (Hunn) could have done differently that may have changed the outcome of this case. First, have a clear, written policy in place defining what constitutes trade secrets and other proprietary information and proper methods for handling those. Second, have policies restricting how and when employees may take company property and files home, and addressing storage and return of property and files. Third, create and enforce clear conditions for access, distribution and use of drafts, proposals, files and other works-in-progress to avoid inadvertently granting an implied license to third parties such as contractors, consultants or clients.
*THIS IS NOT LEGAL ADVICE*
*CONSULT A QUALIFIED ATTORNEY ABOUT YOUR SPECIFIC SITUATION*
The case of Clarity Software, LLC v. Financial Independence Group, LLC is a great example the serious, negative consequences to intellectual property ownership when business owners and legal counsel fail to ensure that tasks are completed.
The short version is that the creator of computer software, Vincent Heck, sold the copyright in his software to settle a debt to a creditor, Eric Wallace, who intended to form Clarity Software, LLC to own and distribute the software. The lawsuit was for infringement of the copyright in the software.
As they say, “the devil is in the details.” In this case, the detail that became a devil, and ultimately prevented Wallace from enforcing a copyright in the software, was the fact that Clarity Software, LLC was never properly formed and therefore lacked standing to sue for infringement.
Forgive me for employing yet another trite phrase, but “truth is often stranger than fiction.” The Defendant proved that a veritable comedy of errors had occurred resulting in no record of the formation, including 1) the Department of State of Pennsylvania losing the certificate of organization, along with all records of the submission and filing of the certificate of organization, 2) the Plaintiff’s bank (PNC Bank) losing its copy certificate of organization provided when Wallace opened a bank account (even though PNC Bank still had the signature card completed when the account was opened), and 3) Wallace, himself a former President of the Pennsylvania Institute of Certified Public Accountants, losing his copy of the certificate of organization and all records of his communications with his attorney.
Defendant successfully moved for summary judgment based on its argument that Plaintiff did not own the copyright at issue in the litigation since it was not properly organized as a Pennsylvania limited liability company and never acquired valid ownership of the copyright.
Hat tip to Pamela Chestek and her blog, Property Intangible, where she first wrote about this case October 13, 2014. The opinion and order can be found here: Clarity Software, LLC v. Financial Independence Group, LLC, No. 2:12-cv-1609-MRH (W.D. Pa. Sept. 30, 2014).
To find out more about how the Adler Law Group can help your business identify risk and issues related to intellectual property ownership, corporation or LLC formation, or just assess risk associated with your business, contact us for a free, no-obligation consultation by emailing David @ adler-law.com, visiting out web site www.adler-law.com, or calling toll free to (866) 734-2568..