United States District Court, S.D. New York
TNS MEDIA RESEARCH, LLC (d/b/a KANTAR MEDIA AUDIENCES) and CAVENDISH SQUARE HOLDING, B. V. Plaintiffs,
TRA GLOBAL, INC. (d/b/a TRA, Inc.), Defendant. TRA GLOBAL, INC. (d/b/a TRA, Inc.), Counterclaim-Defendants.
TNS Media Research, LLC (d/b/a KANTAR MEDIA AUDIENCES); CAVENDISH SQUARE HOLDING, B
; WPP PLC; WPP GROUP USA, INC.; KANTAR GROUP LTD.; and KANTAR RETAIL AMERICA, INC., Counterclaim-Plaintiff,
Nathan Lowenstein, Esq., Perry Mark Goldberg, Esq., Trevor Stockinger, Esq., Goldberg, Lowenstein & Weatherwax LLP, Los Angeles, California, for Defendant and Counterclaim-Plaintiff TRA.
Marc Rachman, Esq., Andrew Keisner, Esq., Davis & Gilbert LLP, New York, New York, Michael A. Albert, Esq., John Strand, Esq., Charles Steenburg, Esq., Eric Rutt, Esq., Wolf, Greenfield & Sacks, P.C., Boston, Massachusetts, for Plaintiffs and Counterclaim-Defendants the WPP Companies.
OPINION AND ORDER
SHIRA A. SCHEINDLIN, District Judge.
In 2011, Plaintiffs TNS Media Research, LLC d/b/a Kantar Media Audiences and Cavendish Square Holdings B.V. (collectively "Kantar") sued TRA Global, Inc. ("TRA"), seeking a declaratory judgment that Kantar's products do not infringe TRA's patents. TRA brought counterclaims for (1) patent infringement, (2) misappropriation of trade secrets, (3) aiding and abetting breach of fiduciary duty, and (4) breach of contract. Kantar then moved for summary judgment on the patent and trade secret counterclaims and for "no damages on TRA's fiduciary duty, trade secrets, and breach of contract counterclaims."
On November 25, 2013, this Court granted summary judgment as to "non-infringement, trade secrets, and non-patent damages." In so ruling, this Court noted that:
[E]xcluding the frozen market theory of damages does not dispose of TRA's non-patent claims. TRA notes in its opposition brief that it may be entitled to  nominal damages for its breach of contract claim;  attorneys' fees for its breach of fiduciary duty claim; and  equitable relief for both claims. [Kantar does] not dispute this point in [its] reply brief.
At the December 20, 2013 conference, the Court directed the parties to confer regarding the remedies still available to TRA, and, to the extent they disagreed, to make a limited motion. Now before the Court is Kantar's motion to limit TRA's remedies and strike its jury demand. For the reasons stated below, Kantar's motion is granted in part and denied in part.
II. TRA's Requests
A. Injunctive Relief
TRA claims it is entitled to injunctive relief for its fiduciary duty and contract claims. TRA's theory for aiding and abetting breach of fiduciary duty is that "[Kantar] utilized and manipulated the representative it had appointed to TRA's Board to obtain unfettered and improper access to TRA's confidential information and trade secrets." But because TiVo acquired TRA in 2012, Kantar no longer has a representative on TRA's board. Without a fiduciary to enjoin, TRA has no basis for injunctive relief.
Nor is TRA entitled to injunctive relief for its breach of contract claims. TRA alleges breaches of (1) a 2008 Non-Disclosure Agreement ("NDA"), (2) a 2009 NDA, (3) a 2007 NDA, and (4) an End-User License Agreement ("EULA") for TRA's product. The first two have expired, rendering injunctive relief moot. Specifically, the 2008 NDA expired in September 2013 - "thirty months from the date of the disclosure." The date of the last disclosure could have been no later than March 2011 when Kantar launched its accused products. The 2009 NDA expired on September 3, 2010, eighteen months after its execution on March 3, 2009.
Further, injunctive relief on the remaining two contracts is foreclosed by the Court's November 25, 2013 Opinion and Order. The 2007 NDA allowed Kantar to access TRA's confidential information and "develop... projects relating to the [confidential information].... independently of the information provided...." TRA argues that Kantar used the information to copy TRA's method of generating target indices, but the Court has held that Kantar's method is different and granted summary judgment as to non-infringement. Similarly, TRA alleges that Kantar breached the EULA by using confidential information it learned while accessing TRA's TRAnalytics platform. However, the Court found "no evidence in the record that [Kantar's] Accused Products made use of any of the technical information alleged by TRA, " specifically with regards to TRAnalytics.
Finally, TRA's request for a "head start injunction" is moot. Such relief would enjoin Kantar for "the length of time it would have taken for [Kantar] to incorporate the trade secret had it not wrongfully used the information prior to public disclosure." TRA's theory is Kantar was able to develop a competing product in one year instead of two because Kantar used TRA's confidential information. Given ...