On appeal from the Superior Court of New Jersey, Law Division, Atlantic County.
Before Judges King, Havey and A.m. Stein.
The opinion of the court was delivered by
We granted leave to appeal from an order of the Law Division of November 19, 1993, refusing to quash a subpoena duces tecum issued by Trump's Castle against TropWorld Casino. The subpoena was issued by Trump's Castle during the course of discovery relating to an action by it against a former employee, Joseph Tallone. TropWorld contended that the subpoena called for the revelation of "trade secrets" or proprietary information relating to marketing strategy which it should not have to disclose to a vigorous competitor in the gaming industry, especially since TropWorld was not a party to the primary dispute in litigation. We conclude that the Law Division Judge should have reviewed the materials and taken any necessary testimony in camera, outside the presence of Trump's Castle's attorneys or representatives, and then reached a Conclusion whether the subpoenaed information was protected from routine discovery disclosure in civil litigation. On the present record, we cannot tell if the subpoenaed information warrants protection from disclosure as a "trade secret."
In 1992 Joseph Tallone was employed by TropWorld Casino in Atlantic City. Tallone worked at TropWorld in a supervisory position over several employees. In the summer of 1992, Tallone solicited employment with Trump's Castle, claiming that he and Ron Collapardi, Bimal Dua, Lou Pascal, James Palladinetti, Ping Bagg and Chi Hui could bring "'high roller' patrons" to Trump's Castle Casino. Trump's Castle hired Tallone and the others. Tallone was hired as Vice-President of Player Development under a two-year written contract from September 1, 1992 to August 31, 1994 for $205,000 a year plus fringe benefits, car allowance of $750 a month, and a bonus in Trump's Castle's discretion.
Tallone's performance did not reach Trump's Castle's expectations. Neither Tallone nor the other new employees brought substantial new business or increased receipts for Trump's Castle. They were terminated in January 1994. Trump's Castle was allegedly "forced to expend considerable sums in employee salaries and other expenses occasioned by the misrepresentations of Tallone" and brought this suit against Tallone and a separate suit against two of the others for fraud, misrepresentation and breach of contract. Tallone counterclaimed for damages.
On August 30, 1993, Trump's Castle served a subpoena duces tecum and for oral depositions on TropWorld. Trump's Castle asked TropWorld to produce:
documents evidencing dollar amount totals (but not names) with respect to (1) the gambling patrons generated by each of the seven ex-employees, and (2) gamblers not generated by each of the seven ex-employees but who had been "coded" or assigned to each of the seven ex-employees. These dollar amounts should reflect the table drop, slot handle, total expenses (including complimentaries paid to patrons and other costs attributable to obtaining those patrons, including the salary and bonuses paid to the seven ex-employees) and theoretical win with respect to each of the two categories of patrons.
"Theoretical win" refers to the "house" winnings, not the customer's.
TropWorld immediately moved to quash the discovery subpoena under R. 4:10-3(g), claiming that compliance would "require production of confidential trade secrets," relying on the definition in the Restatement of Torts § 757 [(1939)].*fn1 The current Restatement definition is contained at Restatement (Third) of Unfair Competition § 39 (Tentative Draft No. 4, March 25, 1993), which defines a trade secret in "black letter" as "any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others." The Restatement, supra, § 39 comment d at 28 states in pertinent part:
d. Subject matter. A trade secret can consist of a formula, pattern, compilation of data, computer program, device, method, technique, process, or other form or embodiment of economically valuable information. A trade secret can relate to technical matters such as the composition or design of a product, a method of manufacture, or the know-how necessary to perform a particular operation or service. A trade secret can also relate to other aspects of business operations such as pricing and marketing techniques or the identity and requirements of customers (see § 42, Comment f).
TropWorld claimed that the "method by which each casino compensates its marketing personnel [and lures customers into the casino] is a closely guarded, confidential aspect of the business conducted by a given casino employer." After oral argument and some conclusory testimony by Michael Bloom, TropWorld's marketing director, the Judge found that the requested information was not a trade secret. She said:
I don't want to make light of TropWorld's concerns because I understand that it's a very competitive world out there. And that when you have eleven businesses, multi-million dollar businesses on a strip competing with each other, day-by-day fighting for customers, that it is a sensitive issue and that there are, certainly, business reasons for wanting to protect any edge that you may have, or that you feel you may have, or any information that may be advantageous to you. But I have considered what you've told me and I don't ...