Acuity Brands Lighting, Inc. v. Bickley
5:13-cv-00366
E.D. Ky.Mar 31, 2017Background
- Acuity Brands sued former RVPs Shane Bickley and Michael Robinson and their employer Delta T Corp. (Big Ass Fans) alleging breaches of post-employment covenants (non-solicitation, non-disclosure, non-competition, return-of-property), KUTSA violations, and tortious interference.
- The Individual Defendants had executed Stock Award Agreements in 2012 containing restrictive covenants; both left Acuity in 2013 and began work at Big Ass Fans. Robinson copied his laptop to an external drive; Bickley failed to return a flash drive.
- Big Ass Fans began developing a competing High Bay LED product after hiring Bickley; plaintiffs contend defendants used Acuity confidential information to accelerate development and sales.
- The court originally granted summary judgment for defendants on several contract and tort claims but denied summary judgment on return-of-property and KUTSA claims; plaintiffs moved for reconsideration based on changes in Georgia law.
- On reconsideration the court: applied the 2011 Georgia restrictive-covenant statutes (allowing modification/“blue pencil”), reinstated breach claims for non-solicitation, non-disclosure, and non-competition (modifying the non-compete territorially), and reinstated the tortious-interference claim against Big Ass Fans; it denied defendants’ summary judgment motions on these claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enforceability of restrictive covenants under Georgia law | GA statutes (post-2011) allow courts to modify overbroad covenants and permit broader enforcement of NDAs, non-competes, non-solicits | Pre-2011 Georgia case law made entire covenants void if overbroad; defendants argued unenforceability persists | Court applied new GA statutes, found non-disclosure and non-solicitation enforceable; non-compete enforceable after territorial modification to RVP’s South Central region |
| Breach of non-competition by Bickley | Bickley’s role at Big Ass Fans overlapped with Acuity duties; jury can find breach | Defendants: Big Ass Fans role, markets, and channels differ; no substantial similarity and thus no breach | Court found genuine disputes of material fact about duties, timing, and territory; modified covenant and denied summary judgment on breach |
| Breach of non-disclosure and return-of-property / KUTSA damages | Acuity seeks damages measured by costs of developing its IBL (and reasonable royalty under KUTSA); retained electronic files link to Big Ass Fans’ product launch | Defendants: no causal link; plaintiffs’ damages theories are speculative and improperly rely on Big Ass Fans’ profits (which plaintiffs did not sue under KUTSA) | Court held factual disputes on misuse/disclosure preclude summary judgment on NDAs and KUTSA; but barred many damages theories as non-disclosed or untimely and rejected plaintiffs’ attempt to use third-party profits to measure damage against individuals |
| Tortious interference by Big Ass Fans | Big Ass Fans knew of covenants, encouraged defendants’ involvement in lighting efforts and recruitment, and thus intentionally interfered | Big Ass Fans: no knowledge/intent to interfere and no admissible proof of damages | Court found genuine factual disputes on knowledge/intent and held nominal (and potentially punitive) damages may be available; denied summary judgment for Big Ass Fans |
Key Cases Cited
- In re Knoxville News Sentinel Co., Inc., 723 F.2d 470 (6th Cir.) (strong presumption of public access to judicial records)
- Brown & Williamson Tobacco Corp. v. FTC, 710 F.2d 1165 (6th Cir. 1983) (public-access exceptions and trade secret/confidentiality considerations)
- Proctor & Gamble Co. v. Bankers Trust Co., 78 F.3d 219 (6th Cir. 1996) (good-cause standard for sealing discovery)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard and requirement that disputes be material)
- Hulcher Servs. v. R.J. Corman R.R. Co., 543 S.E.2d 461 (Ga. Ct. App.) (balancing geographic scope of non-compete and employee’s right to earn a living)
- Botterbusch v. Preussag Int’l Steel Corp., 609 S.E.2d 141 (Ga. Ct. App.) (nominal damages recoverable for breach of contract)