Xerox Corp. v. Neises

Decision Date17 December 1968
Citation295 N.Y.S.2d 717,31 A.D.2d 195
PartiesXEROX CORPORATION, Plaintiff-Respondent, v. John T. NEISES and Dennison Manufacturing Company, Defendants-Appellants.
CourtNew York Supreme Court — Appellate Division

Haliburton Fales, 2d, New York City, of counsel (Jeffrey A. Barist, New York City, with him on the brief; White & Case, New York City, attorneys) for defendants-appellants.

Whitney North Seymour, New York City, (Whitney North Seymour, Jr., James W. Harbison, Jr., and Anthony L. Fletcher, New York City, with him on the brief; Simpson, Thacher & Bartlett, New York City, attorneys) for plaintiff-respondent.

Before EAGER, J.P., and STEUER, RABIN, McNALLY and BASTOW, JJ.

BASTOW, Justice.

This appeal presents the issue as to the extent that injunctive relief should be granted pendente lite to an employer against its former employee pursuant to the provisions of a writing executed by the employee during the period of employment.

The corporate defendant ('Dennison') and individual defendant ('Neises')--presently employer and employee--appeal from an order enjoining each preliminarily from (a) continuing that relationship in so far as it relates to employment in 'xerography' and (b) the utilization by either of 'any information, knowledge or data' Neises may have received during his employment by plaintiff ('Xerox') 'relating to trade secrets, formulas, business processes, methods, machines, manufacturers, compositions, inventions, discoveries or other matters, which are proprietary or confidential to Xerox.'

From 1961 to 1968 Neises was employed by Xerox. In July of the latter year he voluntarily resigned and accepted employment with Dennison. This action was promptly commenced seeking, among other things, permanent injunctive relief.

Neises' original employment with Xerox was as a salesman. During the ensuing years he received various promotions and in late 1966 was named manager of plaintiff's Business Products & Systems Control Department. Prior thereto and in July, 1966, while holding the title of Manager of Divisional Planning, Neises unilaterally executed a writing entitle 'Employee Patent and Confidential Information Agreement.'

Inasmuch as this instrument is the focal point of the litigation it requires brief analysis. Therein Neises in consideration of his employment by plaintiff made certain promises. While not germane to the issues presented in this action but in view of the less clear portions of other provisions of the writing it should be noted that in the opening paragraph ('A') Neises agreed that during his employment he would not 'directly or indirectly, serve, advise or be employed by any individual, firm or corporation engaged in the same or similar line of business or research as that carried on by Xerox.'

Next, the writing ('D') provided that during or subsequent to Neises' employment by Xerox he would not disclose 'any information, knowledge or data * * * relating to trade secrets, formulas, business processes, methods, machines, manufacturers, compositions, inventions, discoveries or other matters, which are proprietary or confidential to Xerox.' This portion of the agreement has been implemented, as heretofore described, in the order granting preliminary restraint. Such temporary relief was not objected to by defendants at Special Term or in this court and will be continued by the provisions of the order to be entered hereon.

Pertinent here, however, are two other paragraphs ('B' and 'E') of the instrument. The first provided that for two years following termination of his employment Neises would not 'independently engage in xerography or, directly or indirectly, serve or advise in xerography or be employed in xerography by any individual, firm or corporation.' The other paragraph ('E') defined 'xerography' as 'the art of forming and utilizing an electrostatic charge pattern to make visible images directly or through one or more intermediate steps, including, without limitation, the formation of an image in response to the action of light.'

It was pursuant to the provisions of these two paragraphs that Special Term restrained the defendants pendente lite from continuing the relationship of employer and employee 'in xerography whether as 'President' or 'General Manager' of the Copier (Division of (Dennison) or otherwise.' This court granted a stay of this portion of the order pending determination of the appeal so presumably the employment of Neises by Dennison continues.

Thus, it appears that the major portion of the relief sought in the complaint was granted by Special Term. It is familiar law that 'Preliminary injunctions which in effect determine the litigation and give the same relief which is expected to be obtained by the final judgment, if granted at all, are granted with great caution ond only when required by imperative, urgent, or grave necessity, and upon clearest evidence, as where the undisputed facts are such that without an injunction order a trial will be futile.' (28 N.Y.Jur., Injunctions, § 19). In Yome v. Gorman, 242 N.Y. 395, 401--402, 152 N.E. 126, 128, 47 A.L.R. 1165 it was said: 'If (the preliminary judicial restraint) stands there will be nothing left to try * * *. Such an injunction, if ever permissible in advance of final judgment, is plainly inappropriate unless the undisputed facts are such that a trial is a futility (citing case). If there are motives to be probed and opposing equities to be weighed, there must be the searching scrutiny of a trial and the sanction of a judgment.'

Moreover a decree granting injunctive relief, whether temporary or permanent, 'must define specifically what the enjoined person must or must not do, in language so clear and explicit that a layman can understand what he is expected to do, or refrain from doing, without placing the one enjoined in...

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  • SCM Corp. v. Xerox Corp.
    • United States
    • U.S. District Court — District of Connecticut
    • December 29, 1978
    ...post-employment covenants not to compete, required by Xerox for a time from all of its employees. See Xerox Corp. v. Neises, 31 App.Div.2d 195, 295 N.Y.S.2d 717 (1st Dept. 1968). See also Newburger, Loeb & Co. v. Gross, 563 F.2d 1057 (2d Cir. 1977). In addition to exclusionary conduct, SCM ......
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    ...franchise in the territory. See Piercing Pagoda, Inc. v. Hoffner, 465 Pa. 500, 351 A.2d 207, 212 (1976); Xerox Corp. v. Neises, 31 A.D.2d 195, 295 N.Y.S.2d 717, 721 (1st Dep't 1968); Rudiger v. Kenyon, 32 Misc.2d 804, 224 N.Y.S.2d 545, 548 This case is analogous to those in which courts hav......
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    ...(1899). Courts have recognized the validity of restrictive covenants in employee and franchisee contracts. Xerox Co. v. Neises, 31 A.D.2d 195, 295 N.Y.S.2d 717, 721 (1st Dept.1968) (two year, entire trade restriction), Cater Cart Corp. v. Cohan, 231 N.Y. S.2d 192, 194, 35 Misc.2d 702 (Sup.C......
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    ...position of acting at his peril." See Amoco Prod. Co. v. Lindley, 1980 OK 6, ¶ 56, 609 P.2d 733, 746-47 (quoting Xerox Corp. v. Neises, 31 A.D.2d 195, 295 N.Y.S.2d 717 (1968)). The language used by the district court is clear enough that a layperson could understand what the Mayor must refr......
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2 books & journal articles
  • Table of Cases
    • United States
    • ABA General Library Guide to Protecting and Litigating Trade Secrets
    • June 27, 2012
    ...(8th Cir. 2005), 178 Xantrex Tech. Inc. v. Advanced Energies, Inc., 2008 WL 2185882 (D. Colo. May 23, 2008), 122 Xerox Corp. v. Neises, 295 N.Y.S.2d 717 (N.Y. App. Div. 1968), 192n14 Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101 (9th Cir. 2001), 19 Zellner v. Conrad, 589 N.Y.S......
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    • United States
    • ABA General Library Guide to Protecting and Litigating Trade Secrets
    • June 27, 2012
    ...or conclusions about which persons might well differ and without leaving anything for further hearing.”); Xerox Corp. v. Neises, 295 N.Y.S.2d 717, 720 (N.Y. App. Div. 1968) (“a degree granting injunctive relief . . . must define specifically what the enjoined person must or must not do, in ......

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