Milliken & Co. v. Morin

• Decision Date: 20 August 2009
• Docket Number: No. 4610.,4610.
• Citation: 685 S.E.2d 828
• Court: South Carolina Court of Appeals
• Parties: MILLIKEN & COMPANY, Appellant/Respondent, v. Brian MORIN, Respondent/Appellant.

685 S.E.2d 828

MILLIKEN & COMPANY, Appellant/Respondent, v. Brian MORIN, Respondent/Appellant.

No. 4610.

Court of Appeals of South Carolina.

Heard March 4, 2009.

Decided August 20, 2009.

Rehearing Denied November 19, 2009.

Charles E. Carpenter, Jr., and Carmen V. Ganjehsani, both of Columbia; and John C. Glancy, L. Gray Geddie, Jr., and Phillip A. Kilgore, all of Greenville, for Appellant-Respondent.

C. Mitchell Brown, of Columbia; and William S. Brown, Giles M. Schanen, Jr., and Dowse B. Rustin, IV, all of Greenville, for Respondent-Appellant.

SHORT, J.

Milliken & Company (Milliken) appeals from the circuit court's order, arguing the court erred in denying the equitable relief it requested because the jury found Brian Morin breached the covenants in his employment agreement and the verdict was only an award of nominal damages. In his cross-appeal, Morin argues the circuit court erred in finding the inventions assignment and confidentiality provisions of the employee agreement are enforceable. We affirm.

FACTS

Morin obtained his Ph.D. in Experimental Condensed Matter Physics from Ohio State University in 1994, and on April 10, 1995, he began working for Milliken as a research physicist. As a condition of his employment with Milliken, he was required to sign a written Associate Agreement (Agreement). Morin was promoted to Senior Research Physicist on July 13, 1998. While working at Milliken, he went to a composites conference in California that Milliken paid for him to attend to get new applications for their products. Afterwards, Morin began developing an idea to create a high modulus multifilament polypropylene fiber, which is a fiber that has a high resistance to stretching. Morin testified there was a possible five billion dollar market for the fiber, but Milliken refused to support research in multifilament fiber manufacturing when he presented it with the idea. Milliken does not manufacture or sell any multifilament fiber to any third parties. Nor does it possess any production equipment for the extrusion of multifilament fiber.

Morin resigned from Milliken on May 17, 2004, and registered his company, Innegrity, LLC, with the South Carolina Secretary of State the same week.¹ On November 5, 2004, Morin filed his patent for Innegra-S, a high modulus multifilament polypropylene fiber, and immediately assigned the patent to Innegrity. To promote his new fiber, Morin gave a presentation at InnoVenture in Greenville, South Carolina, in May 2005.² On June 21, 2005, Milliken's counsel sent Morin a letter demanding he stop his work with the Innegra product because the activity violated Morin's Agreement with Milliken. Furthermore, Milliken asserted Morin's invention, Innegra-S, belonged to Milliken pursuant to the Agreement. In a response letter Morin claimed he did not experiment with or develop any of his technology using Milliken's equipment, information, or time.³ The letter also proposed a meeting with Milliken to discuss possible resolutions; however, Milliken did not respond and instead filed an action against Morin and Innegrity.

Milliken's Amended Complaint alleged nine causes of action: (1) breach of contract (inventions assignment provision); (2) breach of contract (covenant not to compete); (3) breach of contract (confidentiality provision); (4) misappropriation of trade secrets; (5) unfair trade practices; (6) breach of the implied covenant of good faith and fair dealing; (7) breach of contract accompanied by a fraudulent act; (8) conversion; and (9) breach of the duty of loyalty. The causes of action for conversion and violation of the South Carolina Unfair Trade Practices Act were the only causes of action against both Morin and Innegrity. In his Answer to Milliken's Amended Complaint, Morin asserted nine defenses including claims that the Agreement was unenforceable and was void under public policy. Morin filed an Amended Answer, asserting five counterclaims: (1) breach of contract; (2) breach of contract accompanied by a fraudulent act; (3) breach of the implied covenant of good faith and fair dealing; (4) fraud and misrepresentation; and (5) violation of the South Carolina Unfair Trade Practices Act.

Morin filed a Motion for Summary Judgment arguing, among other things, the Agreement's covenant not to compete provision, the inventions assignment provision, and the confidentiality provision were unenforceable. The motion was denied. Shortly before trial, Milliken voluntarily dismissed four of its causes of action with prejudice, including its two causes of action against Innegrity for conversion and violation of the South Carolina Unfair Trade Practices Act. Morin filed a Motion for Judgment as a Matter of Law, asserting Milliken's claim for the assignment of several patents currently held by Innegrity fails as a matter of law because Innegrity was dismissed from the case.⁴ After Milliken rested its case, Morin moved for a directed verdict on all causes of action and the relief sought by Milliken relating to the patents and patent applications owned by Innegrity. The court denied the motion.

At the conclusion of the trial, only four causes of action against Morin were submitted to the jury: (1) breach of the inventions assignment provision of the Agreement;⁵ (2) breach of the confidentiality provision of the Agreement;⁶ (3) violation of the South Carolina Trade Secrets Act; and (4) breach of the duty of loyalty. The jury found Morin liable for breach of the Agreement, under its inventions assignment and confidentiality provisions, and awarded Milliken $25,324 in actual damages.⁷ The verdict form submitted to the jury contained a single blank for the jury to award actual damages should it find Morin breached the Agreement. Neither party objected to the form or requested a more detailed form. The verdict form did not specify which action by Morin constituted a breach of the Agreement, or what particular invention or confidential information was involved in Morin's breach of the Agreement.

Milliken filed a Motion for Equitable Relief and to Alter or Amend Judgment, and Morin filed a Motion for Judgment Notwithstanding the Verdict, or in the Alternative, for a New Trial. After a hearing on the motions, the court denied the motions of both parties. Milliken appeals and Morin cross-appeals.

STANDARD OF REVIEW

An action for breach of contract based on an employment agreement is an action at law. King v. PYA/Monarch, Inc., 317 S.C. 385, 388, 453 S.E.2d 885, 888 (1995); Moore v. Crowley & Assoc., Inc., 254 S.C. 170, 171, 174 S.E.2d 340, 341 (1970). In an action at law, on appeal of a case tried by a jury, the jurisdiction of this court extends merely to correct errors of law. Townes Assocs., Ltd. v. City of Greenville, 266 S.C. 81, 85, 221 S.E.2d 773, 775 (1976). The factual findings of the jury will not be disturbed on appeal unless the record does not contain any evidence that supports the jury's findings. Id.

LAW/ANALYSIS

I. Milliken's Appeal

Milliken argues the circuit court erred in refusing to grant the equitable relief it requested because the jury found Morin breached the covenants in his Agreement and the verdict was only an award of nominal damages. We disagree.

Generally, equitable relief is available only where there is no adequate remedy at law. Santee Cooper Resort, Inc. v. S.C. Pub. Serv. Comm'n, 298 S.C. 179, 185, 379 S.E.2d 119, 123 (1989). "An `adequate' remedy at law is one which is as certain, practical, complete and efficient to attain the ends of justice and its administration as the remedy in equity." Id. The party seeking an injunction must prove it has no adequate remedy at law. Strategic Res. Co. v. Bcs Life Ins. Co., 367 S.C. 540, 544, 627 S.E.2d 687, 689 (2006).

In its Amended Complaint, Milliken requested actual damages and permanent injunctive relief on its claims for breach of contract. At trial, Milliken presented evidence of past and future money damages it allegedly suffered as a result of Morin's breach of the Agreement, specifically $1,403.26 in travel expenses for the conference Morin attended in California; $81,080.00 in benefits and salary compensation $3,862.85 in paid unused vacation days; and an estimated $60 to $65 million in future lost profits from the fiberglass market.

The verdict form submitted to the jury contained a single blank to award actual damages should the jury find Morin breached the Agreement under either the inventions assignment provision or the confidentiality provision. Milliken did not object to the form; however, Milliken asked the judge to charge the jury on nominal damages and suggested $100.00 as a symbolic nominal amount. In his charge to the jury on actual and nominal damages, the judge did not charge the jury with a specific amount for nominal damages, but stated "they have been referred to as a trivial or trifling sum." Neither party objected to the charge. The verdict form did not specify whether the damages were for Morin's breach of the inventions assignment provision, the confidentiality provision, or both.

The jury awarded Milliken $25,324.00 in actual damages, which is far from the $100.00 amount Milliken requested as an example of nominal damages. Also, the amount of damages awarded by the jury appears to be a specific amount that was calculated by the jury in some manner, as opposed to a general amount such as $25,000.00. Thus, we find Milliken had an adequate remedy at law, and the trial judge correctly found Milliken was not entitled to equitable relief.⁸

II. Morin's Appeal

In his cross appeal, Morin argues the circuit court erred by finding the inventions assignment and confidentiality provisions of Milliken's Agreement were enforceable.⁹ We disagree.

On appeal of the denial of a motion for a directed verdict or JNOV, this Court applies the same standard as the trial court and views the evidence in the light most favorable to the non-moving party. Gadson ex rel. Gadson v. ECO Servs. of S.C.,...