sales managers, including himself, with the purpose of deciding
on a "wish list" of proposals for Thursby to present to
Donnelley's senior management as a whole. Tr. 221-22. This
testimony is uncontradicted. No testimony or evidence was
presented by Donnelley that any of those proposals have ever
been pursued or adopted by Donnelley, or even that they were
ever presented to senior management, and Fagan testified that
he knew of no such action having occurred by December, 1990,
when he left Donnelley. Tr. 223-24.
Moreover, even if the discussions at the Hartford meeting
centered around redetermining Donnelley's goals and new
strategies to accomplish those goals, as Thursby testified, Tr.
36, an employer's ultimate goals or purposes are not considered
trade secrets under Illinois law. Vendo Company v. Stoner,
supra, 245 N.E.2d at 272. The technical "know-how" to
achieve a particular goal may constitute a trade secret,
id., but not untried strategies or tactics at the
Although it may be that an actual pricing policy was agreed
upon at the Hartford meeting with regard to different types of
jobs and clients in different cities, Tr. 33, it was
uncontested that competition in the financial and legal
printing industry today is so keen that pricing is largely a
matter of how great a discount a printer is willing to give to
regular customers and whether or not it will offer a "cap" (or
price ceiling), so that the customer will have price protection
on a job, no matter what costs the printer actually incurs. Tr.
45-46. In light of the vague testimony about the nature of the
pricing options and marketing strategies adopted, if any were
adopted, and Thursby's admission that marketing strategies
underwent "constant evolution," Tr. 36-37, the Court is unable
to find that Fagan possessed confidential information
protectable by injunctive relief.
B. Customer Lists
Although a customer list may, under certain circumstances,
qualify as confidential information, Armour & Co. v. United
American Food Processors, 37 Ill.App.3d 132, 135-36,
345 N.E.2d 795, 798 (Ill.App.Ct. 1st Dist. 1976), such is not the
case with Donnelley's financial and legal customers. The names
of potential customers or contacts for the sale of financial
and legal printing services are readily available through any
directory of financial or law firms, the largest of which are
limited in number and well-known in this field of the printing
industry. As a result, there is no ground for claiming that
Donnelley's customer lists are confidential information.
American Claims Services, Ltd. v. Boris,
137 Ill. App.3d 948, 951-52, 92 Ill.Dec. 723, 725, 485 N.E.2d 534,
536 (Ill.App.Ct. 1st Dist. 1985). Under such circumstances,
Illinois law does not afford injunctive relief. See92
Ill.Dec. at 724, id. 485 N.E.2d at 535.
C. Near-Permanent Customer Relationships
Even in the absence of confidential information or trade
secrets, a former employer may have a protectable interest in
its customer relationships which justifies enforcing a
non-compete agreement, which is to be determined from the facts
and circumstances of the case. Cf. PCx Corp. v. Ross,
168 Ill.App.3d 1047, 119 Ill.Dec. 474, 522 N.E.2d 1333
(Ill.App.Ct. 1st Dist. 1988) (computer hardware company was
entitled to preliminary injunction, pending determination on
merits, where evidence raised fair question of protectable
interest; manifest weight of evidence showed near-permanent
customer relationships and that former employee had disclosed
and used confidential and proprietary information and had
contacted protected customers). To obtain injunctive relief on
this ground, the employer must show that it enjoys
"near-permanent" customer relationships and that "but for his
prior employment, the defendant would not have had contact with
the clients in question." American Claims, supra, 92
Ill.Dec. at 724, 485 N.E.2d at 535.
Under Illinois law, several factors determine whether an
employer enjoys "near-permanent" relationships with its
customers such that the employer has a
"legitimate business interest" in protecting them which
warrants the court's imposing a restraint on trade. Corroon
& Black, Inc. v. Magner, 145 Ill.App.3d 151, 161-64, 98
Ill.Dec. 663, 670, 494 N.E.2d 785, 792 (Ill.App.Ct. 1st Dist.
1986). See Reinhardt Printing Co. v. Feld, supra.
Those factors include "the time, cost and difficulty involved
in developing and maintaining the clientele, the parties'
intention to remain affiliated for an indefinite period, and
the continuity as well as the duration of the relationship."
Reinhardt, supra, 96 Ill. Dec. at 102, 490 N.E.2d at
1307. See also, Corroon, supra, 98 Ill.Dec. at 670,
494 N.E.2d at 792. A court will also consider whether the
employee would have had contact with the customers in question,
but for his or her position with the employer. The Label
Printers v. Pflug, supra.
The evidence does not support Donnelley's claims of
"near-permanent customer relationships" with the clients listed
in Exhibit 19.*fn7 While the testimony showed that Donnelley
had done work for those clients and that, as a result, Fagan
had some contact with some of those clients or supervised sales
representatives who dealt with those clients, Tr. 207, or, in
the case of Skadden Arps Slate Meagher & Flom, that Fagan had
been instrumental in setting up a Donnelley service center at
that law firm at some point, Tr. 86-87, there was no evidence
that Donnelley's financial and legal printing group served the
entire company, investment bank or law firm, as to each client
listed, or, if not, which divisions, departments or practice
groups of the firms listed were longstanding clients of
Donnelley or which partners and "decision-makers" had
longstanding relationships with Donnelley. Much of Thursby's
testimony as to Fagan's contact with clients was not based on
personal knowledge or did not specify what time period was
involved. There was no testimony that any of the clients
listed, or divisions or practice groups thereof, used only or
primarily Donnelley and not other legal and financial printers.
Tr. 70-92. In fact, Thursby testified that Bowne serves
different units, or departments, of at least some of the same
customers for which Donnelley chose to seek protection under
the employment agreement. Tr. 91.
There was no testimony as to any customers' intentions to
establish or maintain an indefinite or continuous affiliation
with Donnelley. On the contrary, both witnesses testified that
in recent years, the major ground on which clients choose a
printer for any given job is price. Tr. 31, 45-6, 124-25, 167.
The testimony also revealed that customer contact was primarily
the responsibility of sales representatives and that Fagan's
direct contact with customers had been limited in recent years.
There was testimony that the financial and legal printing
business has experienced great turmoil since the stock market
crashed in 1987, due to fewer financial deals taking place and
the subsequent reduction in demand for such printing services,
and that as a result the industry has changed dramatically. Tr.
29-30, 42, 166-68. Many printing firms have closed their doors
and only a few remain. Tr. 29-30, 168. As a result, the three
or four large financial and legal printing firms who remain are
scrambling to pick up customers and orders which might have
been served previously by defunct firms and the remaining firms
are eager to gain any competitive edge. The fact that the
market is in such flux contradicts Donnelley's claims of
near-permanent customer relationships with the customers listed
in Exhibit 19.
Donnelley has failed to prove the existence of a protectable,
legitimate business interest justifying the broad restraint on
Fagan's employment and on trade and competition which Donnelley
seeks. The Non-Compete Agreement is unenforceable regardless of
any provision compensating Fagan for observing its
II. Injunctive Relief under the Confidentiality Agreement
A confidentiality agreement is also a restriction on trade,
competition and the free flow of information, in the same
manner as a non-compete agreement. Disher v. Fulgoni,
124 Ill.App.3d 257, 261-63, 79 Ill.Dec. 735, 739,
464 N.E.2d 639, 643 (Ill.App.Ct. 1st Dist. 1984) (employee's
confidentiality agreement will be invalidated if overbroad in
scope and duration and trial court abused discretion in denying
preliminary injunction sought by former employee to nullify
restrictive covenant).*fn8 Before enforcing such an agreement,
a court must determine that the restriction "will not be
greater than is necessary to protect the proprietary interests
of the employer." Id. As discussed above, Donnelley's
evidence as to what it considered confidential information, the
extent to which Fagan possessed such information, and the
nature of Donnelley's proprietary interest in that information
was vague, contradictory and conclusory. There was no evidence
that Fagan has used or disclosed any Donnelley information for
his benefit or that of Bowne. Accordingly, the evidence is
insufficient for the Court to find that Donnelley is entitled
to injunctive relief enforcing the terms of the Confidentiality
Donnelley has failed to carry its burden of proving that it
is entitled to the injunctive relief requested under the
Non-Compete Agreement and the Confidentiality Agreement.
Accordingly, the motion for an injunction is denied in its
III. Defendants' Motion for Directed Verdict
Donnelley presented no evidence that Fagan has breached any
enforceable provision of his agreements with Donnelley or that
Donnelley has suffered any actual harm related to its other
claims against Fagan and Bowne. Defendants' motion for a
directed verdict on all claims is therefore granted. See
Lawter International, supra, 72 Ill.Dec. at 26-27, 451
N.E.2d at 1349-51.
For the reasons stated above, both a preliminary and
permanent injunction are denied. Defendants' motion for a
directed verdict on all claims against them is granted and the
case is closed.
IT IS SO ORDERED.