John Zink Co. v. Robertson
| Decision Date | 09 December 2022 |
| Docket Number | 22-CV-525-JFH-CDL |
| Parties | JOHN ZINK COMPANY, LLC, Plaintiff, v. TODD M. ROBERTSON, Defendant. |
| Court | U.S. District Court — Northern District of Oklahoma |
This matter is before the Court on the Motion for Temporary Restraining Order and Preliminary Injunction (“Motion”) filed by Plaintiff John Zink Company LLC (“John Zink”). Dkt. No. 6. For the reasons set forth below, the Motion is GRANTED.
The Court draws the following facts from the record before it which are undisputed for purposes of the instant Motion. John Zink produces, installs, and services emissions-control and clean-air combustion systems for its clients in the global petrochemical and refining industries. Dkt. No. 2 at 3-4; Dkt. No. 6-1 at 2. Defendant Todd M. Robertson (“Robertson”) worked for John Zink as a service technician from May 2006 through October 2022. Dkt. No. 6-1; Dkt. No. 6-2; Dkt. No. 6-3 at 2. According to John Zink through his employment, Robertson had access to the company's trade secrets and other confidential and proprietary information. Dkt. No. 6-2; Dkt. No. 6-3 at 1; Dkt. No. 6-4.
Robertson terminated his employment with John Zink, effective October 4, 2022, and took a substantially similar position with one of the company's direct competitors. On October 3, 2022 the day before his employment with John Zink ended, Robertson downloaded 944 files from his John Zink computer to a USB device. Dkt. No. 6-5 at 3. He also exported documents from his OneDrive to a Zip file and copied those documents to the USB device. Id. According to John Zink, the materials copied to the USB device contained trade secrets as well as confidential and proprietary data. Dkt. No. 6-3 at 3; Dkt. No. 6-5 at 3-4. According to John Zink, the duplication of its files was unauthorized and was both a breach of the Employee Confidentiality, Invention Assignment, and Non-Solicitation Agreement Robertson signed in connection with his hiring (the “Robertson Agreement”) and a violation of company policy. Dkt. No. 6-2; Dkt. No. 6-3 at 3; Dkt. No. 6-5 at 1. John Zink believes that Robertson intends to use the materials to solicit John Zink's established customers and employees and to provide his new employer an unfair competitive advantage in the marketplace. Dkt. No. 6-3.
John Zink did not discover the unauthorized duplication of its files until October 27, 2022. Dkt. No. 6-5 at 3. Thereafter, it undertook a more extensive investigation. On November 17, 2022, John Zink's counsel sent a letter to Robertson demanding that he: (1) stop any actions or efforts to use or disclose John Zink's trade secrets, confidential information, or proprietary information; (2) immediately return any property of John Zink to its office and allow for a forensic examination of all devices on which this property is stored including his cell phone, laptop, external hard drive or any other device, and for a forensic review of any cloud based storage accounts and email accounts on which this property is stored; (3) provide a list detailing his use and dissemination of John Zink's trade secrets, confidential information, proprietary information, or any other property of John Zink; (4) refrain from any actions or efforts to solicit established customers of John Zink; (5) refrain from any actions or efforts to solicit current employees of John Zink; and (6) stop any further conduct in breach of his obligations to John Zink. Dkt. No. 6-6 at 4.
In the letter, John Zink advised Robertson that it would take necessary legal action to protect its business. Having advised Robertson of potential litigation regarding the duplicated materials, John Zink issued a demand to preserve evidence relevant to its claims, requesting that Robertson preserve all hard-copy information and electronically stored information relating to Robertson's employment with John Zink, the unauthorized acquisition of John Zink trade secrets, confidential information, or proprietary information, and any other wrongful acts committed by Robertson. According to John Zink, it did not receive a response to the letter. Dkt. No. 6 at 15.
On December 2, 2022, John Zink filed this action against Robertson, asserting claims for: (1) misappropriation of trade secrets under the Defend Trade Secrets Act of 2016, 18 U.S.C. § 1836 (“DTSA”); (2) misappropriation of trade secrets under the Oklahoma Uniform Trade Secrets Act, Okla. Stat. tit. 78 §§ 85-95 (“OUTSA”); (3) misappropriation of intangible property; (4) breach of contract; and (5) breach of fiduciary duty.
John Zink also filed the instant Motion for preliminary injunctive relief, requesting that the Court order Robertson to: (1) preserve for use in this matter all documents (in hard copy or electronic format) and all electronic devices, drives, cloud drives, computers, memory sticks or other machines upon which John Zink's property now resides or ever resided; (2) produce to John Zink for examination by an independent computer forensics expert within three days of the date of service of the Court's Order granting this Motion all electronic devices, drives, computers, memory sticks or other machines that Robertson[1]has used at any time since October 4, 2022, or upon which John Zink's property now resides or ever resided, as well as the credentials required to access all cloud drives or accounts that Robertson has accessed or used at any time since October 4, 2022, or upon which John Zink property now resides or ever resided; (3) immediately return to John Zink all John Zink property, including but not limited to hard copy documents, in his possession, custody, or control; (4) refrain, cease, and desist immediately from violating the nondisclosure or non-solicitation obligations under the Robertson Agreement by disclosing Plaintiff's Confidential Information or Trade Secrets, at any time, or by soliciting, directly or indirectly, Plaintiff's established customers or employees until no earlier than October 4, 2024; and (5) refrain, cease, and desist immediately from using or disclosing any trade secrets or confidential information belonging to John Zink. Dkt. No. 6 at 27-28.
A federal court may issue injunctive relief if it has subject matter jurisdiction over the claim and personal jurisdiction over the parties. See Thomas v. Bolls, No. 18-CV-00692-GPG, 2018 WL 9489245, at *2 (D. Colo. May 16, 2018).
There are two statutory bases for federal subject-matter jurisdiction: diversity jurisdiction under 28 U.S.C. § 1332 and federal-question jurisdiction under 28 U.S.C. § 1331. Federal-question jurisdiction exists for all claims “arising under the Constitution, laws, or treaties of the United States.” 28 U.S.C. § 1331. “A case arises under federal law if its well-pleaded complaint establishes either that federal law creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of federal law.” Nicodemus v. Union Pac. Corp., 318 F.3d 1231, 1235-36 (10th Cir. 2003), 440 F.3d 1227 (10th Cir. 2006) (internal quotation marks and citation omitted). Thus, to find jurisdiction under § 1331, two conditions must be satisfied. First, a question of federal law must appear on the face of the plaintiff's well-pleaded complaint. Rice v. Office of Servicemembers' Group Life Ins., 260 F.3d 1240, 1245 (10th Cir. 2001). Second, the plaintiffs cause of action must either be: (1) created by federal law, or (2) if it is a state-created cause of action, “its resolution must necessarily turn on a substantial question of federal law.” Id. (citing Merrell Dow Pharms. Inc. v. Thompson, 478 U.S. 804, 808, 106 S.Ct. 3229, 92 L.Ed.2d 650 (1986)).
Here, in asserting a claim for misappropriation of trade secrets under the DTSA, John Zink has satisfied both conditions necessary to satisfy the jurisdictional requirements of § 1331. Because the Court has original jurisdiction over John Zink's DTSA claim, it may exercise supplemental jurisdiction over the related claims asserted in John Zink's complaint, which arise under state law. See Price v. Wolford, 608 F.3d 698, 702 (10th Cir. 2010) (“Once a district court has jurisdiction, additional claims and parties can be added under the supplemental-jurisdiction statute, 28 U.S.C. § 1367(a), which grants the district courts jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution.”) (internal quotation marks and citation omitted)).
“To exercise jurisdiction in harmony with due process, defendant[ ] must have minimum contacts with the forum state, such that having to defend a lawsuit there would not offend traditional notions of fair play and substantial justice.” Shrader v. Biddinger, 633 F.3d 1235, 1239 (10th Cir. 2011) (brackets and internal quotation marks omitted). The minimum contacts may give way to specific or general jurisdiction. See Intercon, Inc. v. Bell Atl. Internet Sols., Inc., 205 F.3d 1244, 1247 (10th Cir. 2000). General jurisdiction exists when the defendant's contacts with the forum are “so continuous and systematic as to render [it] essentially at home in the forum State.” Fireman's Fund Ins. Co. v. Thyssen Min. Const. of Canada, Ltd., 703 F.3d 488, 493 (10th Cir. 2012) (quoting Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)).
At the pleading stage, a plaintiff need only establish a prima facie showing of personal jurisdiction. Kozeny, 19 Fed.Appx. at 822. Here, John Zink alleges that the Court has personal jurisdiction over Robertson because he...
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