The opinion of the court was delivered by: Fox, United States Magistrate Judge.
The parties consented to try this matter before me pursuant to
28 U.S.C. § 636(c). Plaintiff Thin Film Lab, Inc. ("Thin Film"), an
optical coating firm headed by Gregory Enzor ("Enzor"), commenced this
lawsuit in April 2000 against Defendant Carmelo Comito ("Comito"), a
former employee who created his own optical coating firm, Defendant
Universal Thin Film Lab, Inc. ("Universal"). Enzor seeks injunctive
relief and damages for misappropriation of trade secrets and unfair
competition. In particular, Enzor argues that Comito unfairly solicited
Lucent Technologies, a former customer of Thin Film, using confidential
information, stole confidential coating designs for the
bismuth-iron-garnet ("BIG") substrate from Thin Film's laboratories, and
created a double-planetary rotation device ("DPRD") similar to Enzor's,
using designs stolen from Enzor. Comito denies these allegations and
seeks pro-rated back-payment of bonuses to which he claims he is entitled
pursuant to his employment agreement with Enzor.
A bench trial in this matter commenced on May 13, 2002, and concluded
on June 20, 2002. For the reasons that follow, the court finds that
Comito and Universal violated Thin Film's trade secrets by unlawfully
soliciting one of its most lucrative customers and creating a
double-planetary rotation device that was nearly identical to the unique
DPRD originally crafted by Enzor. However, Thin Film has failed to
demonstrate that Comito violated its trade secrets regarding the
Si02-Hf02-Si02 coating formula for the BIG substrate. Finally, Comito has
failed to show that he is entitled to the back-payment of pro-rated
bonuses for 1997. The following constitutes the court's findings of fact
and conclusions of law.
I. Plaintiff Thin Film Lab, Inc.
Thin Film is a privately-held corporation, originally incorporated in
West Hurley, New York. (T: 93).*fn1 Thin Film's primary business is the
designing of anti-reflective coatings for optical lenses used in military
devices, fiber-optic communications cables and mundane items such as
glasses and camera lenses. (T: 14-15). Gregory Enzor is an optical
engineer and the president of Thin Film. (T: 14).
Enzor started working in the optical coating field in 1968, when he
began employment with Vacuum Instrument Corporation making parts for
vacuum systems within which the optical coatings were done. (T: 17). From
1976 to 1980, he worked at Broomer Research building and repairing vacuum
systems as well as performing a variety of optical coatings. (T: 18). At
Transworld Optics, from 1980 to 1983, Enzor performed optical coatings,
created optical coating designs, and maintained and repaired vacuum
coating chambers, including planetary rotation devices. (T: 19, 23-24).
In 1983, Enzor began working at Continental Optical, where he built a
coating device, created coating designs and performed optical coatings.
(T: 24). There, he worked alongside Defendant Comito, and they co-managed
the coating engineer group, creating coating designs and operating vacuum
chambers. (T: 26). While both were working at Continental, Comito taught
Enzor how to use the Songer computer software to create coating designs
and formulas, as it was the standard in the industry to use this software
for this purpose. (T: 546-47, 560). This computer program was created by
Larry Songer, a consultant at Continental. (T: 882). From 1984 to 1986,
Enzor worked at Photronics Corporation, doing design work, using
planetary rotation devices to do optical coatings, and maintaining and
repairing coating equipment. (T: 29). In all of these work experiences,
Enzor occasionally used silicon dioxide ("Si02") and hafnium oxide
("Hf02") to coat substrates. (T: 484). Every facility at which Enzor
worked was locked with a security system and armed with a burglar alarm
system; public access to the facilities was denied, and the coating
designs used by each company were kept in secure filing cabinets. (T:
In 1986, Enzor started his own business, Thin Film. (T: 34). First, he
purchased a Balzer 510 vacuum chamber and created a double planetary
rotation device largely by his own hand. (T: 35). Because of coating
problems that he had seen from his prior work experience, such as
unreliability, warping and jamming of the coating system (T: 27-28),
Enzor created his planetary rotation device to be different from all
those that he had previously seen. (T: 36). Although some of the parts
used to create his first planetary rotation device were store-bought,
Enzor hand-made many of them, and he modified the store-bought pieces to
suit his own specifications and to prevent the problems that arose with
other planetaries. (T: 77). Every piece, from the sprockets to the
spindles to the mounting systems to the monitor bridge, was different from
anything that Enzor had seen on planetary systems in his prior
experience. (T: 52-64). These precise modifications allowed the planetary
to have increased productivity due to less frequent break-downs, fewer
machine jams, and more accurate coatings, and
generally resulted in a machine that was better than any Enzor had seen
before. (T: 420-21, 491). In total, Enzor spent about three months and
approximately $11,000 to $17,000 building this first double planetary
rotation device. (T: 490). The design for Enzor's planetary rotation
device was completed and written down in October of 1986. (T: 37-38).
Enzor later created four more planetaries based on this original design,
and those machines were put together by Thin Film machinist Tom
Schofield. (T: 39-40, 122-3).
Enzor then set out to find customers for his new company by advertising
in industry trade papers, making hundreds of cold calls to potential
customers and mailing out hundreds of solicitations over a span of one
and a half years. (T: 93-94). As a result of Enzor's efforts, Optics For
Research ("OFR") became one of Thin Film's anti-reflective optical
coating customers. (T: 95-96). Enzor utilized the Songer computer
software for Thin Film's coating work as well. (T: 93). In the course of
performing coatings for OFR, Enzor became familiar with a substrate called
BIG, or bismuth-iron-garnet, an infrared material which was manufactured
by a company then known as Bell Labs, and used by OFR in its products.
(T: 96). OFR requested that Thin Film place an anti-reflective coating on
BIG. (T: 97). Because BIG was going to be used in undersea fiber-optic
cables, Thin Film was required to coat BIG so that it passed several
endurance tests, such as a slicing operation, an adhesion test, and a
boiling water test, to ensure that the coating remained firm and without
defects. (T: 98-99). Enzor created the coating design for BIG by
himself, and in 1990, he began to coat the substrate using the Herpin
theory to create a three-layer combination of Si02 and Hf02. (T: 101).
Bell Labs later became Lucent Technologies. (T: 109). Thin Film was one
of two companies that passed the qualification tests for coating BIG for
Lucent. (T: 149, 194). From 1990 until 1999, Thin Film performed a large
bulk of Lucent's BIG coating work, and Lucent quickly became one of Thin
Film's largest and most lucrative customers. (T: 111). During this time,
Enzor dealt mainly with Steve Licht, the gentleman in charge of the BIG
program at Lucent. (T: 112). Licht came to see Enzor at least twice,
either at the original West Hurley location or at the subsequent Milford
location. (T: 112).
In 1991, Enzor hired his former co-worker, Comito, on a part-time basis
for help in getting a vacuum chamber up and running. (T: 114). Comito
later became employed by Thin Film on a full-time basis under an
employment agreement in which Enzor promised Comito an end-of-year
incentive bonus of 10% of profits over $400,000 for that year. The
agreement did not specify the duration of the employment and stated that
it provided "no protection for either of us." (T: 115-16, 567). Comito's
duties at Thin Film included building and fixing machines, creating
coating designs and assisting Enzor with major business decisions. (T:
117). Enzor also designated Comito as the vice-president of Thin Film
Lab, Inc. (T: 117). Comito did not participate in the creation of the BIG
coating design, or in the actual coating process itself. (T: 112, 868).
However, the main room where all the coating work was performed was small
enough so that Comito was always within a few feet of the BIG coating
chambers or the BIG coating run sheets. (T: 125-26). Here, Comito used
Si02 and Hf02 to coat materials other than BIG. (T: 871-72). The Songer
computer program was utilized at Thin Film to assist in the creation and
formulation of the various coating designs. (T: 884).
In 1995, Thin Film moved to Milford, Pennsylvania and became
incorporated under the laws of that state. (T: 441).
Some employees of Thin Film, including Comito, possessed keys to the
facilities at West Hurley and Milford. (T: 119-20). The plants were,
however, armed with burglar alarm systems and locked to the public so
that no one but those authorized could look at the run sheets used to
guide the coating engineers in their coating runs. (T: 120). Enzor, in
fact, gave specific instructions to his staff to keep the coating
materials and designs confidential, and stamped his run sheets
"confidential." (T: 119-20). Enzor also gave similar instructions
regarding the designs and plans that he created for the planetary
rotation device. (T: 418). In addition, each employee was required to
sign a company policy acknowledging the prohibition against stealing Thin
Film's property, including coating designs and processes. (T: 426).
Throughout the mid-1990s, Thin Film was the best and most reliable
optical coater used by Lucent to coat its BIG substrate. (T: 197). In
fact, Lucent was giving about 80% of its BIG coating business to Thin
Film during this period. (T: 150, 206). At this time, there were many
published articles available to the industry regarding BIG coatings, for
although it was new, it was considered to be just another high-index
material. (T: 156). Towards the late 1990s, Thin Film began to encounter
difficulties in dealing with Lucent and in coating BIG. (T: 152). These
difficulties included the BIG substrate pieces getting mixed up either
before delivery to Thin Film or after coating at Thin Film, slow delivery
turnaround times (three days instead of one), and wax buildup on the
substrate pieces that Lucent sent to Thin Film which resulted in
inaccurate coatings. (T: 152, 170). The problems were eventually
addressed, and Lucent never intended to terminate Thin Film as its BIG
coater. (T: 177-78, 431). Nonetheless, in 1999, Lucent stopped sending
the bulk of its BIG coating work to Thin Film. (T: 111). This was less in
part because of the coating and delivery problems Thin Film had
encountered and mainly due to Lucent's need for a second supplier to meet
increased coating demand. (T: 177). Lucent had no reason to discontinue
its business with Thin Film (T: 199), and would have continued the same
level of business with Thin Film until any additional capable vendor
appeared. (T: 204).
In May 1997, Comito handed a letter of resignation to Enzor, with an
offer to continue working under different employment terms. (T: 568,
853). Enzor was unwilling to reduce the number of hours Comito was
working or to increase his salary, so he released Comito from
employment. (T: 444-45). After Comito left Thin Film, he and Enzor had
conversations in which Comito asked for his bonus from the first part of
the 1997 calendar year. (T: 462). However, by May 1997, Thin Film had not
yet earned $400,000 in profits for that year. (T: 445). About a month or
two after Comito left, Enzor discovered that his sketches and plans for
the original double planetary rotation device were missing. (T: 462). He
had not had occasion to look for them earlier, but he knew that Comito
was the only person who left Thin Film during that time. (T: 462-63).
Within three or four months, Enzor learned that Comito was operating his
own business, using the name Universal Thin Film Lab. (T: 463). Then, in
the fall of 1998, Enzor found out that Universal Thin Film Lab was
coating the BIG substrate for Lucent, at the same time that Thin Film's
BIG business volume from Lucent dropped sharply until it eventually
disappeared. (T: 463-64).
II. Defendant Carmelo Comito
Carmelo Comito is the president and chief executive officer of
Universal, an optical coating company. (T: 810). Comito began his career
in the optical coating industry in 1980, when he became employed
at Continental Optical as a coating technician. (T: 811). While at
Continental, Comito became a coating engineer and manager, supervising
the design and processing of thin film coatings. (T: 812). When creating
designs for coating various substrates, Comito used the Songer computer
software. (T: 820). About two years after Comito started working at
Continental, Enzor also became employed there and worked with Comito in
the coatings department. (T: 812). Although Comito was not involved in
the creation of any planetary rotation devices at Continental, he,
together with Enzor and others, helped to modify and maintain the
machines. (T: 813-14). Comito left Continental in 1985 and began
employment at Inrad Incorporated, first as a coating engineer, then as
vice president of coating. (T: 815). At Inrad, Comito continued his work
on modifying and maintaining double planetary rotation devices, and again
used the Songer computer software to create coating designs. (T:
818-20). Using the Herpin theory, he performed many coatings on a
substrate called lithium niobate, using a combination of Si02 and Hf02.
After five years at Inrad, Comito started work at Thin Film in 1990,
first as a part-time engineer, and later as a full-time employee. (T:
835). As per the terms of the employment agreement, every January, Enzor
was to pay Comito an annual bonus of 10% of the profit exceeding $400,000
from the previous calendar year. (T: 838). Enzor and Comito never
discussed the payment of pro-rated bonuses should Comito's employment be
terminated before the end of a calendar year. (T: 839). In addition,
Comito understood Enzor's statement that "no protection for either of us"
spoke for itself. (T: 841).
During Comito's employment with Thin Film, Enzor referred to him as
vice president, and payroll records indicated that Comito was vice
president of Thin Film. (T: 118, 842). As vice-president of Thin Film,
Comito was authorized to interact with customers, make binding agreements
such as giving price quotes to potential customers, and sign official
documents. (T: 424). For example, Comito signed state sales tax exemption
certificates using the letters "VP" by his signature. (T: 118).
When Comito arrived at Thin Film, a double planetary rotation device,
created by Enzor, was already in use. (T: 844). In fact, Comito was not
involved in the creation of double planetary rotation devices at Thin
Film at all. (T: 234). Comito normally worked on a coating device that
was obtained after he began his employment at Thin Film, and used the
other machines very infrequently. (T: 845). He worked on several hundred
to a thousand coating designs at Thin Film, and usually created run
sheets for each of these. (T: 845-46). While Comito was at Thin Film, he
used the Si02-Hf02 combination for coating. (T: 437).
Comito knew that Thin Film was coating the BIG substrate for Lucent
Technologies, and that Si02 and Hf02 were two of the materials used. (T:
848-49). However, he never coated or assisted in coating BIG while at
Thin Film, nor was he otherwise involved in BIG coating. (T: 846, 849).
Comito had opportunity to be introduced to the Lucent representatives who
visited the Thin Film plant, including Steve Licht, and knew Licht to be
associated with the BIG coating program at Lucent. (T: 271, 849-50).
Within a month of leaving Thin Film, Comito decided to open his own
optical coating business. (T: 856). In the summer of 1997, he incorporated
Universal, and that fall, he obtained a facility in Newburgh, New York.
(T: 857). Comito performed some coating work on behalf of Kevin McKeon,
who polished materials and routed them to Comito for coating. (T: 859).
Comito became aware that McKeon was sending him coating jobs for Lucent
Technologies. (T: 154, 860). Thereafter, he decided to call Steve Licht
at Lucent, and informed McKeon that he could coat the BIG substrate and
that Licht knew this. (T: 271-72). As a result, McKeon gave Comito's
phone number to Licht and instructed him to call Comito for details
regarding Comito's ability to coat BIG. (T: 159, 275). Licht asked his
co-worker Bob O'Connor to send samples of BIG to Universal to see if it
qualified to perform the coating work required. (T: 200). O'Connor was
led to believe that Comito developed the BIG coating process while at
Thin Film and performed BIG coatings for Thin Film. (T: 202-03).
Ultimately, Universal qualified to coat BIG for Lucent. (T: 204).
Comito then began coating BIG for Lucent, using the Herpin theory to
develop a three-layer coating combination of Si02 and Hf02, telling
O'Connor that the coating information was created by him and was
proprietary. (T: 211, 867, 869). He encountered similar difficulties in
coating Lucent's BIG as Enzor had seen, such as wax buildup on the BIG
samples and adhesion problems. (T: 863-64). He resolved these issues and
offered Lucent a 24-hour turnaround time period for delivery of the
coated BIG. (T: 867). By 1999, Universal had obtained about 90-95% of
Lucent's BIG coating business. (T: 206).
Also in 1999, Comito began to employ Schofield as a machinist, first on
a part-time basis, then on a full-time status. (T: 235). Working off of
"rough sketches" that Comito possessed, Schofield created a double
planetary rotation device for Comito, designated the CHA-2, that was the
spitting image of Enzor's first machine. (T: 236). In fact, Enzor's
machine and the CHA-2 that Schofield built for Comito based on the rough
sketches were "virtually identical," and the first time Schofield saw any
machines like these was at Thin Film. (T: 238-39). Schofield recognized
some of the rough sketches as being those that Enzor created for Thin
Film and that he referred to when building Thin Film's planetary rotation
devices. (T: 237). After completion of the planetary rotation device,
Schofield reorganized, redrew and standardized the rough sketches,
informing Comito that he would throw the old, rough sketches away. (T:
247). Comito gave no Schofield no instruction to keep the rough
sketches, nor did he inform Schofield that this lawsuit was pending at
the time; had he done so, Schofield would not have thrown the rough
sketches away. (T: 247, 249).
I. Defendant Violated Plaintiff's Trade Secrets By Obtaining Lucent
Technologies as a Customer and Constructing and Operating a Double
Planetary Rotation Device Utilizing Plaintiff's Design, But Did Not
Violate Plaintiff's Trade Secrets By Using a Similar Si02-Hf02-Si02
Coating Formula for the Bismuth-Iron-Garnet Substrate.
A. Trade Secrets: In General
In New York, a trade secret is defined as "any formula, patterns,
device or compilation
of information [that] is used in one's business, and [that] gives [the
owner] an opportunity to obtain an advantage over competitors who do not
know or use it." Softel, Inc. v. Dragon Medical & Scientific
Communications, Inc., 118 F.3d 955, 968 (2d Cir. 1997) (quoting
Restatement of Torts, § 757 comment b (1939)), cert. denied,
523 U.S. 1020, 118 S.Ct. 1300, 140 L.Ed.2d 466 (1998); see also, Hudson
Hotels Corp. v. Choice Hotels Intern., 995 F.2d 1173, 1176 (2d Cir.
1993); Integrated Cash Mgmt. Serv., Inc. v. Digital Transactions,
920 F.2d 171, 173 (2d Cir. 1990); Delta Filter Corp. v. Morin,
108 A.D.2d 991, 992, 485 N.Y.S.2d 143, 144 (3d Dept. 1985).
Courts have considered the following six factors to be relevant in
deciding whether particular information is a trade secret: "(1) the
extent to which the information is known outside of the [plaintiffs]
business; (2) the extent to which it is known by employees and others
involved in the business; (3) the extent of measures taken by the owner
to guard the secrecy of the information; (4) the value of the information
to the owner and to his competitor; (5) the amount of effort or money
expended in developing the information; and, (6) the ease or difficulty
with which the information could be properly acquired or duplicated by
others." Anacomp, Inc. v. Shell Knob Services, Inc., 1994 WL 9681, at
*6-7 (S.D.N.Y. 1994) (internal quotations omitted); see also, Ashland
Mgmt. Inc. v. Janien, 82 N.Y.2d 395, 407, 604 N.Y.S.2d 912, 917-18,
624 N.E.2d 1007, 1012-13 (1993). The most important factor is whether the
information is secret. See Lehman v. Dow Jones & Co., 783 F.2d 285,
289 (2d Cir. 1986). "Absolute secrecy, however, is not required."
Anacomp, Inc., 1994 WL 9681, at *9, citing A.H. Emery Co. v. Marcan
Products Corp., 389 F.2d 11, 16 (2d Cir.), cert. denied, 393 U.S. 835, 89
S.Ct. 109, 21 L.Ed.2d 106 (1968). "The rule is only that a "substantial
element of secrecy must exist and this means so much that except by use
of improper means, there would be difficulty in acquiring the
information.'" Q-Co Industries, Inc. v. Hoffman, 625 F. Supp. 608, 617
(S.D.N.Y. 1985) (quoting A.H. Emery Co., 389 F.2d at 16).
In order for a party to succeed on a claim for misappropriation of
trade secrets, the party must show that "(i) it possessed a trade secret
and (ii) that the defendant used that trade secret in breach of an
agreement, a confidential relationship, or duty, or as a result of
discovery by improper means." Hudson Hotels Corp., 995 F.2d at 1176; see
also, Integrated Cash Mgmt. Serv., 920 F.2d at 173. Further, "a former
employee can be prohibited from taking trade secrets from his former
employ[er] whether or not there exists an employment contract which
prohibits competition." Computer Associates Intern., Inc. v. Bryan,
784 F. Supp. 982, 988 (E.D.N.Y. 1992). However, protection of the trade
secret will not attach "where the alleged confidential information is
readily ascertainable from nonconfidential sources." Cosmos Forms, Ltd.
v. American Computer Forms, Inc., 193 A.D.2d 577, 579, 596 N.Y.S.2d 862
Second Circuit courts have held that "an agent has a duty "not to use
confidential knowledge acquired in his employment in competition with his
principal.'" North Atlantic Instruments, Inc., v. Haber 188 F.3d 38, 47
(2d Cir. 1999) (internal quotations omitted). See also, Unisource
Worldwide, Inc. v. Valenti, 196 F. Supp.2d 269, 280 (E.D.N.Y. 2002). The
agent's duty exists during employment, "as well as after the employment
is terminated." North Atlantic instruments, Inc., 188 F.3d at 47
(internal quotations omitted). This fiduciary duty "does not need to be
formalized in writing . . . and any inquiry into whether such obligation
exists is necessarily fact-specific to the
particular case." AM Cosmetics, Inc. v. Solomon, 67 F. Supp.2d 312, 320
(S.D.N.Y. 1999). A court may examine "whether a party reposed confidence
in another and reasonably relied on the other's superior expertise or
knowledge." Id.; see also, Manufacturers Hanover Trust Co. v. Yanakas,
7 F.3d 310, 318 (2d Cir.), motion to vacate denied, 11 F.3d 381 (2d Cir.
1993); Chester Color Separations v. Trefoil Capital Corp., 222 A.D.2d 276,
636 N.Y.S.2d 613 (1995). In essence, "ongoing conduct between parties may
give rise to a fiduciary relationship that will be recognized by the
Here, the Court finds that Enzor, the sole shareholder of Thin Film,
designated Comito as vice president of Thin Film. On cross-examination,
Comito conceded that Enzor entrusted him with the duties of vice
president, including administrative and decision-making responsibilities,
thereby creating a fiduciary relationship between the two men:
Q: Now, at Thin Film Lab, weren't you designated
as a vice president of the company?
Q: Well, sir, you signed documents as vice
president, didn't you?
Q: Didn't you supervise employees?
Q: Did you give job quotes?
Q: Did you deal with customers?
Q: Did you coat design coatings all by yourself?
Q: You made administrative decisions, didn't
Comito: Concerning mostly myself.
Q: As part of your supervision of employees, didn't
you make administrative decisions?
Q: Well, you weren't the president, right?
You were the vice president.
(T: 911-12). Comito even signed Thin Film documents, wherein he assumed
the title and responsibility of being Thin Film's vice president:
Comito: It's a tax-exemption certificate.
Q: Was that filed with the State of Pennsylvania,
Comito: It looks that way, yes.
Q: Did you put the initials VP after your
Comito: I believe I did, yes.
Q: And you offered that to the State?
Comito: I was told to sign that.
Q: Did you sign it in the capacity of vice
Comito: I signed it as vice president.
Q: And did you know, in doing that, that you were
representing to the State of Pennsylvania that
you had authority to act as vice president
(T; 913). Therefore, as the vice president of Thin Film, Comito owed
Enzor a fiduciary duty, both during and after employment at Thin Film,
not to unfairly compete with Enzor.
B. Plaintiffs Work Relationship With Lucent Technologies Was a Trade
"The question of whether or not a customer list is a trade secret is
generally a question of fact." A.F.A. Tours v. Whitchurch, 937 F.2d 82,
89 (2d Cir. 1991); see also Chevron U.S.A., Inc. v. Roxen Service, Inc.,
813 F.2d 26, 29-30 (2d Cir. 1987); Defiance Button Machine Co. v. C
& C Metal Products Corp., 759 F.2d 1053, 1063 (2d Cir.), cert.
denied, 474 U.S. 844, 106 S.Ct. 131, 88 L.Ed.2d 108 (1985). The
determination of whether a customer list is a trade secret depends in
part on whether or not the owner "took reasonable measures to protect
[the] secrecy of the list," and "the ease or difficulty with which the
information could properly be obtained from other sources." A.F.A.
Tours, 937 F.2d at 89 (internal quotations omitted); see also, Defiance
Button Machine Co., 759 F.2d at 1063. A customer list which is "developed
by a business through substantial effort and kept in confidence" may be
found to be a trade secret and protected as such, as long as the
information is not otherwise readily ascertainable. Defiance Button
Machine Co., 759 F.2d at 1063. "The mere fact that an employee has access
to information the employer regards as confidential is not inconsistent
treatment of the information as a trade secret," as long as the employer
takes "appropriate precautions to alert the employee to the need to
maintain confidentiality." A.F.A. Tours, Inc., 937 F.2d at 89.
On the other hand, "[s]olicitation of an employer's customer by a
former employee is not actionable unless the customer list could be
considered a trade secret or there was wrongful conduct by the employee,
such as physically taking or copying the employer's files or using
confidential information." Cosmos Forms, Ltd., 193 A.D.2d at 579,
596 N.Y.S.2d 862 (quoting Levine v. Bochner, 132 A.D.2d 532,
517 N.Y.S.2d 270 (2d Dept. 1987)). In such a case, the former employee
may still be enjoined from using the unlawfully-obtained information
because he engaged in unfair competition. See Ecolab Inc. v. Paolo,
753 F. Supp. 1100, 1111 (E.D.N.Y. 1991). The rationale for such an
injunction is that the former employee "has breached a fiduciary duty to
the employer by engaging in misconduct." Ivy Mar Co., Inc. v. C.R.
Seasons Ltd., 907 F. Supp. 547, 560 (E.D.N.Y. 1995). See also, Leon M.
Reimer & Co. v. Cipolla, 929 F. Supp. 154, 161 (S.D.N.Y. 1996); Leo
Silfen, Inc. v. Cream, 29 N.Y.2d 387 392, 328 N.Y.S.2d 423, 427,
278 N.E.2d 636 (1972) (holding that, for example, a physical taking of
customer lists might give rise to a claim for breach of fiduciary duty).
First of all, the Court is persuaded that the existence of Lucent as a
BIG coating customer of Thin Film constituted a trade secret. Enzor did
not fail to take "reasonable measures to protect [the] secrecy" of Lucent
as one of Thin Film's BIG customers. A.F.A. Tours, 937 F.2d at 89.
Q: Did you have any discussions about the
Enzor: Either verbal or written, I had asked him not to contact my
client list and not to use the name Thin Film Lab.
Q: What did Mr. comito say to you?
Enzor: I don't think he spoke directly on either
of those points.