Bond v. Polycycle, Inc.

ADKINS, Judge. This case is an appeal from an order of the Circuit Court for Baltimore County issued by the Honorable Norris Byrnes against Martin Bond, appellant, in favor of PolyCycle Corporation (PolyCycle), appellee. The trial court found that Bond misappropriated a trade secret and issued an injunction restricting him from disclosing or making use of the technology he developed on behalf of PolyCycle. PolyCycle was also awarded attorneys’ fees.

Appellant timely noted this appeal. Appellant asks us to determine whether the trial court erred in: 1) finding that he violated the Maryland Uniform Trade Secrets Act; 2) concluding, without the appropriate finding of fact, that he usurped a corporate opportunity; 3) ordering him to pay appellee’s counsel fees; and 4) placing an unreasonable restraint on his right to free speech. For the reasons that follow, we perceive no error and affirm the judgment of the circuit court. FACTS Prior to July 1995, George Brown and Marvin Marks were involved in discussions concerning a potential investment in Antaeus Group, Inc. (Antaeus).

Later, Brown and Marks approached appellant, an engineer, and asked him to review a technology patented by Antaeus, which separated toxins from medical waste. It was Brown and Marks’s idea that the same technology could be used to remove paint and other adherents from plastic in a way that would be non-destructive to the plastic. In essence, the process broke the plastic into small pieces and applied a combination of heat and agitation to break the bond between the paint adherent and the plastic, without changing the physical or chemical properties of the plastic. In exchange for Bond’s review of the technology, ³⁶⁹ Brown and Marks offered him a share of a proposed joint venture to license and commercialize the technology.

Appellant reviewed the technology and concluded that it had great economic potential. As a result, Bond, Brown, and Marks formed PolyCycle in 1995 “[t]o engage in the business of designing and manufacturing equipment for use in the separation of adherent foreign matter from solid materials, including the separation of paint from plastic resins and providing the use of such equipment as a service to others” In exchange for a license to use the Antaeus process and common stock in Antaeus, PolyCycle paid Antaeus $700,000 and agreed to pay it future royalties. Bond was named the president of PolyCycle and was responsible for the daily operations of the company. Brown was responsible for accounting, while Marks performed marketing and consulting services.

It was agreed that no one would receive compensation for his work. Bond estimated that the development of the technology would take up to six months and cost approximately $75,000 to $100,000. Bond began to undertake the development and improvement of the Antaeus technology. After renting space for the business, and purchasing equipment and supplies, Bond determined that the Antaeus technology was not suitable for Poly-Cycle’s needs without modification.

One problem with the existing apparatus was that it did not recycle the water used in the process. Therefore, Bond added a hydrocyclone to the machine to recycle the water. Secondly, to improve the process, Bond replaced the Vaughan chopping pump with a Dicon mixing pump. Lastly, Bond modified the pressure vessels on the equipment to further aid the process.

In addition to modifying the equipment, Bond sought customers for PolyCycle. Specifically, Bond targeted the automobile industry. When Bond discussed the technology with potential customers, he required that they sign a confidentiality agreement, which stated that the technology belonged to PolyCycle. ³⁷⁰ As a result of a delay of more than two years and costs of approximately $500,000, meetings were held to review PolyCycle’s progress. At one of these meetings, Bond requested a salary for his efforts, but Brown and Marks declined the request, citing PolyCycle’s failure to generate a profit.

Bond then consulted with an attorney and sought assistance in negotiating a compensation package. Bond’s subsequent compensation demand upon PolyCycle merely resulted in further estrangement of the parties. Bond also sought legal advice on whether his improvements to the technology were patentable. After conferring with his attorney, Bond believed that his modified process was not sufficiently different from the existing technology to warrant a patent.

He testified, however, that he believed based on his attorneys’ advice, that he was entitled to use any modifications of the Antaeus technology for which he was responsible, but that PolyCycle might have the right to use his modifications. On September 23, 1997, Bond, through counsel, wrote to Marks and Brown and informed them that he had determined that the Antaeus technology was not commercially viable, but that he had developed an alternative technology that he believed was economically viable. Bond further stated that this alternative technology did not belong to PolyCycle, and contended that it belonged to him. The next day, on September 24, 1997, Bond resigned from PolyCycle as a director and officer.

When Bond left, he took all of the technology with him, including computer files, papers, and records pertaining to the technology. In addition to taking the computer files, he deleted the files from PolyCycle’s computers. In response, PolyCycle brought this suit, seeking to compel the return of, and restrict the use of, such information. DISCUSSION Appellant contends that the trial court erred in finding that he willfully and maliciously violated the MUTSA.

He also contends that the court placed an impermissible prior re ³⁷¹ straint on his right to free speech. Appellee asserts that the trial court did not err in its findings. We agree with appellee. In reviewing the trial court’s decision on the evidence, this Court will not reverse unless the decision was clearly erroneous.

See Md. Rule 8-131(c). Maryland Rule 8-131(c) provides: When an action has been tried without a jury, the appellate court will review the case on both the law and the evidence. It will not set aside the judgment of the trial court on the evidence unless clearly erroneous, and will give due regard to the opportunity of the trial court to judge the credibility of the witnesses. See also Operations Research, Inc. v. Davidson & Talbird, Inc., 241 Md. 550, 556 , 217 A.2d 375 (1966). 1.

Maryland Trade Secrets Act The Maryland Uniform Trade Secrets Act (MUTSA) defines a trade secret as: [Ijnformation, including a formula, pattern, compilation, program, device, method, technique, or process, that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Md.Code (1975, 1990 Repl.Vol.), § 11-1201 of the Commercial Law Article. The subject matter of a trade secret: ‘may be an industrial secret like a secret machine, process, or formula, or it may be industrial know-how (an increasingly important ancillary of patented inventions); it may be information of any sort; it may be an idea of a scientific nature, or of a literary nature ... or it may be a slogan or suggestion for a method of advertising; lastly, the subject- ³⁷² matter may be the product of work, or expenditure of money, or of trial and error, or the expenditure of time.’ Space Aero Prods. Co. v. R.E. Darling Co., 238 Md. 93, 105 , 208 A.2d 74 , cert. denied, 382 U.S. 843 , 86 S.Ct. 77 , 15 L.Ed.2d 83 (1965) (quoting Amedee E. Turner, The Law of Trade Secrets 4 (1962)).

Prior to the enactment of the MUTSA, the Court of Appeals adopted the factors for determining whether a trade secret exists as set forth in the Restatement of Torts. These factors are: ‘(1) the extent to which the information is known outside of his business; (2) the extent to which it is known by employees and others involved in his business; (3) the extent of measures taken by him to guard the secrecy of the information; (4) the value of the information to him and to his competitors; (5) the amount of effort or money expended by him in developing the information; [and] (6) the ease or difficulty with which the information could be properly acquired or duplicated by others.’ Id. at 110 , 208 A.2d 74 (quoting Restatement of Torts § 757 cmt. b (1939)). According to comment b of section 757 of the Restatement, ‘[a] trade secret may consist of any formula, pattern, device or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating, or preserving materials, a pattern for a machine or other device, or a list of customers.’ Optic Graphics, Inc. v. Agee, 87 Md.App. 770, 782 , 591 A.2d 578 , cert. denied, 324 Md. 658 , 598 A.2d 465 (1991) (quoting Restatement of Torts § 757 cmt. b (1939)).

The Maryland statutory definition of a trade secret is “based on the Restatement comment,” id. at 784, 591 A.2d 578 , and we have held that although the Restatement factors are no longer a necessary part of the analysis, the “factors still provide helpful guidance to determine whether the information ³⁷³ in a given case constitutes ‘trade secrets’ within the definition of the statute.” Id. “To the extent that the Restatement presents a narrower view, the [MUTSA] pre-empts that definition.” Id. at 783 , 591 A.2d 578 . In the present case, in determining whether the information was a trade secret, the trial court relied on the Restatement factors and made the following findings: The extent to which the information is known outside the business. Well, in this case Antaeus went to great lengths to protect the information it had with regard to its process and the information developed by Mr. Bond as shown on the Defendant’s Exhibit 19 was known only to him. He thought so much of it that he contacted a patent attorney although nothing came of it.

But because it may not be patentable, it does not rule it out as a trade secret. He clearly thought highly of the information and sought to protect it. Another factor is the extent to which it is known by employees and others involved in the business. The evidence that 1 have is that he’s the only one that knows exactly how to do this.

An inference from the facts is that I have heard in this case over the last few days is that there is more to it than just adding a different pump, a hydrocyclone and two vessels. There is the amount of water that is used, there is the amount of pressure that should be used, there is the temperature of the water, all of th[at] is information that is known only to Mr. Bond. Another factor that one would consider is the extent of measures taken by the employer to guard the secrecy of the information. Mr. Bond, whenever he was discussing with potential customers the process, made certain that they signed confidential agreements.

He also told me that he did not let anyone know the full extent of the process, including the ... potential employer for Mr. Bond. He told me that, and ... I find as a fact that [the potential employer] did not know the extent of the work, done by Mr. Bond on the process. ³⁷⁴ Another factor is the value of the information to the employer and his competitors. Certainly there is a reasonable inference that this information is very valuable because again Mr. Bond went to some lengths to protect the company, from letting this information out to others without a confidentiality agreement.

The amount of effort or money expended by the employer in developing the information. Well, they have spent ... over half a million dollars, and Mr. Bond has expended one third of that. He has also expended a great deal of effort, which I said earlier is probably the prime reason why we find ourselves here today. Another factor is the ease or difficulty with which the information could be properly acquired or duplicated by others.

So there are six factors, five [of] which I find are applicable here. The sixth factor [is] the difficulty with which information could be properly acquired. It’s clear that the equipment is easily acquired by others. Whether the process could be duplicated by others, the evidence is not fully clear because even as we sit here, and for good reason, Mr. Bond never has said exactly how the process would work____ But there ... are six factors which I apply to this process of evaluating whether or not the development of this process equals a trade secret, and I conclude as a matter of fact that it does.

Appellant contends that the trial court erred in finding this process to be a trade secret. His argument has two prongs: 1) the components of the machine are all available on the open market; and 2) the fundamental concept of breaking plastics into pieces and applying heated water and agitation is “widely known in the plastics industry.” We find his argument flawed. The availability of components in the open market is not dispositive. In Coca-Cola Bottling Co. of Shreveport, Inc. v. Coca-Cola Co., 107 F.R.D. 288 (D.Del.1985), the United ³⁷⁵ States District Court for the District of Delaware analyzed “one of the best-kept trade secrets in the world”: the complete formula for Coca-Cola.

Id. at 289 . The court explained that “although most of the ingredients are public knowledge, the ingredient that gives Coca-Cola its distinctive taste is a secret combination of flavoring oils and ingredients known as ‘Merchandise 7X.’ ” Id. (citation omitted). The court further explained that it is the formula for Merchandise 7X that is tightly guarded.

The formula for Merchandise 7X is only known by two persons within the Coca-Cola Company and the only written record of the formula is kept in a security vault at the Trust Company Bank in Atlanta, Georgia, which can only be opened via a resolution from the Board of Directors of Coca-Cola. See id. Although the formula for the PolyCycle technology may not have been kept in a locked vault, only Bond knows the “secret formula” of how small to make the pieces of plastic, how much water to use, the appropriate temperature of the water, the proper level of agitation to apply, and the length of the agitation process. As appellee correctly points out, “[I]t is those elements, mixed and processed precisely in a certain manner, that define the PolyCycle process, just as much as the specific blend of ... available ingredients defines Coca-Cola.” Thus, we reject the first prong of appellant’s argument.

Head Ski Co. v. Kam Ski Co., 158 F.Supp. 919 (D.Md.1958), is helpful in addressing the second prong of appellant’s argument that the concept of applying heated water and agitation to pieces of broken plastic is widely known. Although Head Ski predates the enactment of MUTSA, it is persuasive authority. In this federal case, Head Ski Co. sought an injunction prohibiting Kam Ski Co. from using a certain manufacturing process for metal skis that the owners of Kam Ski Co. learned while employed at Head Ski Co. Like appellant, Kam Ski Co. argued that the process it used to manufacture its skis was not Head Ski’s trade secret because the process, methods, and materials it used were ³⁷⁶ known and used on the open market. The court rejected that argument and explained that Kam Ski Co. “overlooks the fact that a knowledge of the particular process, method or material which is most appropriate to achieve the desired result may itself be a trade secret.

So may a knowledge of the best combination of processes, methods, tools and materials.” Id. at 923 . The court further reasoned: Similarly, although the materials used are available for purchase by anyone, the choice of a particular material was dictated by years of experimenting. Tests of a ski purchased on the open market would have disclosed many of the secrets, if one knew which tests were important. But the qualities for which one should test the materials are an important part of the secrets learned over the years.

Defendants did not buy a Head ski on the open market and test the materials. They had learned while working for Head what materials he used, and where a test was necessary they tested material on which they had been working for Head---- ‘It matters not that the defendants could have gained their knowledge from a study of the expired patent and the plaintiffs’ publicly marketed product. The fact is that they did not. Instead they gained it from the plaintiffs via the confidential relationship, and