details respecting these products as Yokana might be able to carry in his mind with or without the benefit of notes which he might make for his own guidance, or which he might obtain through use of plaintiff's publicly distributed catalogues or drawings, would not expose him or Sterling to injunctive interference or damages. However, as far as is disclosed by the evidence before me, Yokana had no right to retain drawings or blue prints which were the property of his employer after the termination of his employment, nor had he any right to retain or use his employer's customer lists, price lists, or pricing data for his own, or the purposes of the corporation which he organized to compete with plaintiff. The plaintiff is, therefore, entitled to the return to it by the defendants of all drawings and blue prints which Yokana took from the plaintiff and Hartig. With respect, however, to drawings, blue prints and specifications of parts which plaintiff and its predecessor had delivered to and allowed to be retained by its suppliers, Yokana and Sterling were entitled, with the consent of such suppliers, to avail themselves of such data in specifying orders for the supply of parts. Plaintiff contends, upon the authority of Pressed Steel Car Co. v. Standard Steel Car Co., Pa.1904, 210 Pa. 464, 60 A. 4, that the suppliers had no right to make available to Sterling the patterns, drawings and specifications which plaintiff had furnished to the supplier. Of course, none of the suppliers of the plaintiff has been made a party to the present litigation. Any injunction which this Court might issue against the use by suppliers of plaintiff's drawings in their possession would be ineffective. If Sterling should order the fabrication of a part from a supplier by referring to the type furnished or being furnished to the plaintiff, and such supplier should use, in filling such order, a drawing which had been furnished to it by the plaintiff, the present defendants would not be in contempt for using the part so supplied.
Plaintiff clearly had a property right in the customer lists, price lists, price calculations, sales forecasts, and similar material accumulated and developed by the plaintiff and its predecessor during the employment of Yokana. See Board of Trade of City of Chicago v. Christie Grain & Stock Company, 1905, 198 U.S. 236, 25 S. Ct. 637, 49 L. Ed. 1031. How shall relief upon this aspect of the case be afforded? Yokana doubtless became acquainted with plaintiff's customers through his numerous contacts with them while he was sales engineer for that company, and previously when he was in charge of sales as vice president of Hartig. Indeed, when he decided to leave the plaintiff's employ and go into business for himself, he had a perfect right to notify these customers of his intention, and to receive orders from them if they chose to give them to him. The proprietors of one of plaintiff's customers, the Mosses, entered into the new Sterling enterprise with Yokana. The evidence discloses that representatives of many other customers of Hartig, or of the plaintiff, elected to transfer their companies' business to or to give some of it to Sterling, for a variety of reasons, which included considerations of better delivery, better service, dependability, friendship for Yokana, more favorable prices and terms, post-purchase service and technical assistance, and dissatisfaction with the plaintiff. Therefore, while Yokana is obligated to return to the plaintiff whatever customer lists, price and cost data he has which may belong to the plaintiff, he is under no obligation to force himself to forget what he may recall of the information contained therein. Indeed, such a directive would be an absurdity because unenforceable.
Finally, although the evidence discloses that Yokana, through Sterling, has done well financially in his own business, there has been no proof offered by the plaintiff that it has suffered or is likely to suffer irreparable damage by reason of the use by Yokana and Sterling of information which Yokana obtained during his employment by the plaintiff and its predecessor. Indeed, plaintiff's sales during the year following Yokana's resignation increased approximately 20% Over those during the preceding year. Plaintiff here seeks both injunctive relief and damages. In order to entitle it to injunctive relief, there must be a showing that the plaintiff has suffered or will probably suffer irreparable harm and that legal remedies are inadequate. Beacon Theaters, Inc. v. Westover, 1959, 359 U.S. 500, 79 S. Ct. 948, 3 L. Ed. 2d 988. I find no proof of irreparable injury upon the basis of which an injunction should issue in this case. While plaintiff might be entitled to an accounting by Sterling of such profits as plaintiff can prove that the defendants gained through the misuse of customer lists, cost tabulations and price data which it may have obtained through Yokana from the plaintiff, I find no evidence thus far presented of any such misuse. Although following Pennsylvania law, the Third Circuit Court of Appeals in Sears Roebuck & Co. v. L-M Manufacturing Co., 1958, 256 F.2d 517, held that a customer list procured under circumstances giving rise to a relationship of trust, can be considered a trade secret, such is also the rule in New Jersey. Golden Cruller & Doughnut Co., Inc. v. Manasher, Chanc.1923, 95 N.J.Eq. 537, 123 A. 150; citing Stone v. Grasselli Chemical Co., 65 N.J.Eq. 756, 55 A. 736, 63 L.R.A. 344.
I am unable to find in the evidence any basis for concluding that the defendants have unfairly competed with the plaintiff by defendants' retention and use of its drawing and blue prints, either in the production of Sterling's products, or in the formulation of specifications and placing of orders by means of which Sterling procured from suppliers of the plaintiff parts for Sterling's own product. I do find, however, that Yokana unlawfully retained drawings and blue prints which belonged to the plaintiff or its predecessor, and which were furnished to him for use in the performance of the duties of his employment. The defendants, therefore, will be directed to return such documents to the plaintiff. I further find that Yokana had no right to retain and use for his own purposes and those of Sterling, plaintiff's customer lists, cost calculations and pricing data. Such documents and any copies thereof made by or for the defendants, must also be returned by the defendants to the plaintiff. Except to the extent that I am requiring the return of drawings, blue-prints and other documents, I deny plaintiff's prayer for preliminary and final injunctive relief. In so doing I am not precluding the presentation of evidence, if available, upon the issue of damages, if any, suffered by plaintiff in consequence of defendant's use of plaintiff's customer lists, cost calculations, and pricing data. See Schreyer v. Casco Products Corp., 2 Cir., 1951, 190 F.2d 921.
This opinion shall serve in lieu of the findings of fact and conclusions of law required by Rule 52(a), F.R.Civ.P. 28 U.S.C.A.
An order may be presented in conformity with the views herein expressed.
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