451 S.W.3d 767
Mo. Ct. App.2014Background
- Sigma-Aldrich employed Omar Vikin from 2006 to 2013; as a condition of employment he signed an Agreement containing a two-year post‑employment non‑compete tied to products/processes on which he worked or for which he had access to Confidential Information.
- At Sigma Vikin worked on strategic planning, packaging/shipping, the “Science Place” online marketplace, aggregation of third‑party products, and website user‑experience improvements.
- Vikin resigned in July 2013 to become General Manager, Americas, at Alfa Aesar; that GM role was described as an oversight/operations position (not sales or web design) and Alfa did not plan an online marketplace similar to Science Place.
- Sigma sued to enjoin Vikin from working at Alfa; a TRO was briefly granted and then dissolved, and the trial court denied a preliminary and permanent injunction, finding the Agreement unenforceable.
- The trial court found the non‑compete lacked an adequate geographic or other limiting scope (creating an unlawful global ban) and that Sigma failed to prove the information Vikin possessed amounted to protectable trade secrets rather than public or industry‑known strategies.
- Sigma appealed, arguing (1) the Agreement’s product/market language was a sufficient non‑temporal restriction, (2) Vikin’s role at Alfa posed more than “mere competition,” and (3) Vikin possessed current Sigma trade secrets creating a threat to Sigma.
Issues
| Issue | Plaintiff's Argument (Sigma) | Defendant's Argument (Vikin) | Held |
|---|---|---|---|
| Enforceability because Agreement lacks geographic limit | Agreement limits scope by product/process and by areas "where the Company markets or sells" such that a geographic label was unnecessary and reasonable for a global competitor | Provision is a global, capacious ban on working for competitors in any capacity and lacks adequate specificity or territorial/other limiting criteria | Agreement unenforceable: absence of geographic or other sufficiently specific limiting terms created an unlawful global restraint; court properly refused to reform it |
| Whether non‑compete protects interests beyond "mere competition" (i.e., protects trade secrets/customer contacts) | Because Vikin had access to Sigma confidential info and Alfa sells competing products, his employment poses a greater threat than mere competition—Agreement should be enforced | Sigma failed to show protection of trade secrets or customer lists; Vikin’s Alfa role is oversight, not sales/marketing, and Alfa did not plan a Science Place equivalent | Court held the covenant did not protect trade secrets or customer lists and therefore impermissibly sought to restrain mere competition; enforcement denied |
| Whether Sigma proved Vikin possessed current trade secrets creating imminent threat | Sigma contends Vikin had access to current, valuable confidential trade secrets (Science Place, aggregation strategy, customer insights) and that he could exploit them at Alfa | Vikin and evidence showed the relevant ideas were publicly known/implemented, industry‑known, or not within his Alfa responsibilities; Alfa outsourced online functions | Court found Sigma failed its burden: information was not shown to be secret, narrowly held, or sufficiently valuable/difficult to duplicate to qualify as trade secrets; no injunction |
| Trial court’s discretion to refuse modification of covenant | Sigma urged modification (blue‑penciling/limiting) to make covenant enforceable only as to relevant roles/territory | Trial court argued the covenant was an unlawful global restraint and declined to reform it | Court affirmed exercise of discretion refusing to modify; enforcement not ordered |
Key Cases Cited
- Murphy v. Carron, 536 S.W.2d 30 (Mo. 1976) (standard of review for trial court judgments)
- Whelan Sec. Co. v. Kennebrew, 379 S.W.3d 835 (Mo. banc 2012) (non‑compete enforceable only if reasonable and narrowly tailored)
- Healthcare Servs. of the Ozarks, Inc. v. Copeland, 198 S.W.3d 604 (Mo. banc 2006) (restrictive covenants protect trade secrets or customer contacts, not mere competition)
- Brown v. Rollet Bros. Trucking Co., Inc., 291 S.W.3d 766 (Mo. App. E.D. 2009) (factors for identifying trade secrets)
- Schott v. Beussick, 950 S.W.2d 621 (Mo. Ct. App. 1997) (greater specificity in class of prohibited contacts can reduce need for territorial limits)
- Mills v. Murray, 472 S.W.2d 6 (Mo. App. 1971) (time‑limited solicitation restriction upheld without spatial restraint)
- Sigma Chemical Co. v. Harris, 794 F.2d 371 (8th Cir. 1986) (discussion of product‑based restrictions and scope of injunctions)