U.S. Land Services, Inc. v. U.S. Surveyor, Inc.

BAKER, Judge,

concurring in part and dissenting in part.

I agree with the majority decision affirming enforcement of the Trade Secrets Act as to Surveyor’s surveyor database because it is inextricably tied to Surveyor’s development of its ratings for particular surveyors contained within the database. I also agree that the preliminary injunction was too broad—especially considering that the non-competition agreements were held to be unenforceable for the purposes of the preliminary injunction. To be sure, the evidence shows that Harding had worked in the surveying business prior to his employment at Surveyor, and Wyber had surveying coordination and management experience from her employment with Surveyor.

I must, however, part ways with the majority’s decision to include Surveyor’s customer database as a trade secret. The majority identifies the key factor that prompts me to reach a different outcome as to the customer database: absent valid non-competition agreements, the focus is on protecting Surveyor’s trade secrets-—• *71not preventing Harding, Wyber, or Land Services from competing with Surveyor.

The trial court specifically found that “vast amounts of information may be obtained through internet sources regarding prospective clients and prospective surveyors for use by survey coordination companies, [but] this does not mean that Survey- or did not intend its client, prospect or surveyor databases, each having substantial value to Surveyor, to be available or portable so that employees separating from the company might take” the information with them upon separation from Surveyor. Finding No. 35. Surveyor’s intentions are of no moment. It did not preserve its goodwill through valid non-competition agreements.

It is apparent that the identification of customers is readily ascertainable by those in the surveying management and coordination business through public information sources. Abundant evidence presented at the hearing disclosed that the information can be obtained through internet search engines, telephone directories, and the like. Hence, I cannot agree that such information meets the definition of a trade secret. In my view, the customer database did not derive “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.... ” Ind.Code § 24-2-3-2. Accordingly, I cannot agree that Surveyor met its burden to show that the customer database constituted a trade secret. See Zemco Mfg., Inc. v. Navistar Int’l Transportation Corp., 759 N.E.2d 239, 245 (Ind.Ct.App.2001), trans. denied, (determining that the party asserting a trade secret has the burden of proof).

Also, that Harding and possibly Wyber disclosed customer database information to Land Services is of no concern absent a showing that the customer database constituted a trade secret, or a showing that the non-competition agreements should be upheld. Here, the trial court’s preliminary injunction as to the customer database effectively prevented competition instead of protecting Surveyor’s trade secrets.

Therefore, I am compelled to concur in part and dissent.