Intent To Use Is Sticking 'Pointe' In Denial Of Preliminary Injunction

On October 25, the U.S. District Court for the District of Massachusetts denied motions for injunctive relief in a case involving trade secrets allegedly stolen by a departing consultant using his personal computer to sync with the company's Dropbox. This case established (1) Massachusetts' newly enacted Uniform Trade Secrets Act ("UTSA") does not apply retroactively even if the violation is continuing; and (2) intent to use a trade secret is a hurdle which Plaintiffs can struggle to show where there is not evidence of actual use and the defendant takes steps at remediation.

Maine Pointe, a supply chain firm, filed a complaint against Collins, a former consultant, alleging trade secrets misappropriation and breach of contract, and requesting both a temporary restraining order and a preliminary injunction.

Maine Pointe hired Collins as a consultant, pursuant to a written employment agreement, in April 2018. Maine Pointe did not issue a company computer to Collins and allowed Collins to use his personal computer for the work he performed for Maine Pointe. Collins was given access to Maine Pointe's file server, a password-protected Dropbox account.

On September 30, 2018, Collins logged onto Maine Pointe's Dropbox site and downloaded a variety of folders which included client data and other Maine Pointe documents, templates and presentations, including the Analysis Playbook. Later that evening, Collins "unlinked" his personal computer from Dropbox. Typically, when Maine Pointe revokes a user's access to Dropbox, any data synched to that user's computer will be deleted. But if a user "unlinks" a Dropbox account and personal computer, Maine Pointe cannot delete information from that computer or verify what data resides on that computer.

On October 1, Collins announced his resignation by email. The next day, Collins assured Maine Pointe that his new employer does not work with any Maine Pointe customers and that he would not work with such customers for the next six months, pursuant to his noncompete agreement.

With respect to the breach of contract claim, the court held that, because "Maine Pointe did not outline any procedures for Collins to 'promptly return' the documents, or define the term 'promptly return,' the Court cannot conclude on the present record that Collins violated his contractual obligations."

With respect to the trade secrets claim, the court concluded that, as an initial matter, the newly-enacted Massachusetts UTSA does not...