                                                                                                                           Opinions of the United
2004 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


2-12-2004

Doeblers PA Hybrids v. Doebler Seeds
Precedential or Non-Precedential: Non-Precedential

Docket No. 03-4108




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                                                               NOT PRECEDENTIAL

                   THE UNITED STATES COURT OF APPEALS
                          FOR THE THIRD CIRCUIT

                                    ___________

                                    No. 03-4108
                                    ___________

                  DOEBLER'S PENNSYLVANIA HYBRIDS, INC.

                                          v.

                 DOEBLER SEEDS, LLC, d/b/a T.A. Doebler Seeds;
                     TAYLOR DOEBLER, III, an individual,

                                                  Appellants
                                    ___________


          ON APPEAL FROM THE UNITED STATES DISTRICT COURT
              FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

                             (D.C. Civil No. 03-cv-01079)
                 District Judge: The Honorable James F. McClure, Jr.

                                    ___________

                      Submitted Under Third Circuit LAR 34.1(a)
                                  January 30, 2004

                BEFORE: NYGAARD and FUENTES, Circuit Judges.
                         and O’NEILL,* District Judge.


                               (Filed February 12, 2004)




*        Honorable Thomas N. O’Neill, Jr., Senior District Judge for the United States
District Court for the Eastern District of Pennsylvania, sitting by designation.
                                      ___________

                               OPINION OF THE COURT
                                    ___________


NYGAARD, Circuit Judge.

              This case is an expedited interlocutory appeal by Appellants T.A. Seeds

(formerly known as Doebler Seeds, LLC) and Taylor Doebler, III (“Doebler III”) of a

preliminary injunction entered by the District Court. The District Court entered the

injunction to protect Appellee Doeblers’ Pennsylvania Hybrids, Inc. (“DPH”) from the

harmful acts of T.A. Seeds and Doebler III that allegedly included unfair competition,

trademark dilution, and misappropriation of trade secrets. We will affirm.

                                            I.

              Because the facts are known to the parties, and we write only for them, our

factual summary is brief. This case stems from a dispute over the control of family-

owned businesses, all of which have similar names. T.A. Doebler & Son, later renamed

Doebler Seeds, LLC and then T.A. Seeds, is a seed growing business. DPH is a business

that markets seeds grown by T.A. Doebler & Son and other growers, under the trade

name Doebler’s. The Doebler’s trade name has been in use for 30 years and is considered

by the public to be synonymous with DPH. DPH also does substantial research and

testing of new hybrid seeds.




                                            2
              In late 2002, because of disagreements with the senior management of

DPH, Doebler III resigned both his employment and position on the board of the

company. Doebler III maintained, however, exclusive control over T.A. Doebler & Son.

He renamed the company Doeblers’ Seeds, LLC and developed a plan to grow and

market seed corn in competition with DPH. He hired many of the employees who

formerly worked for DPH.

              After Doebler III failed to respond to a cease-and-desist letter, DPH sued

alleging, inter alia, unfair competition, trademark dilution, and misappropriation of trade

secrets. The District Court granted a preliminary injunction enjoining Appellants from:

(1) using the Doebler’s mark or any confusingly similar variation; (2) engaging in unfair

competition; (3) offering for sale any of a list of twenty-one seed corn hybrids sold by

DPH; and (4) comparing any of its hybrids to those sold by DPH. On reconsideration, the

District Court refused to amend the injunction, but required DPH to post a bond for

security. In response to the Court’s concern about name confusion, Doebler III agreed to

rename his company T.A. Seeds (“TAS”).

                                             II.

              A preliminary injunction is an appealable interlocutory order under 28

U.S.C. § 1292(a)(1). We review a District Court’s grant of a preliminary injunction for

abuse of discretion, error of law, or clear mistake of fact. Vuitton v. White, 945 F.2d 569,

574 (3d Cir. 1991).



                                             3
              Appellants TAS and Doebler III argue on appeal that the preliminary

injunction was in error because it: (1) imposed restrictions on competition despite the lack

of a non-compete agreement; (2) was overbroad; (3) overestimated the harm to DPH and

underestimated the harm to TAS; and (4) mistakenly concluded DPH’s trade secrets were

misappropriated. Appellants’ claims are meritless and require little discussion.

              The preliminary injunction was not an abuse of discretion nor an error of

law. DPH showed: (1) a reasonable probability of success on the merits; (2) irreparable

injury; (3) harm outweighing possible harm to other parties; and (4) that the injunction

would be in the public interest. See Novartis Consumer Health, Inc. v. Johnson &

Johnson-Merck Consumer Pharms. Co., 290 F.3d 578, 586 (3d Cir. 2002). Appellants

are incorrect that the District Court erred in its assessment of harms to the parties.

Customer confusion to the detriment of DPH is inevitable, since the TAS employees are

substantially derived from DPH, the two companies sell the same products in the same

market, and the companies are located in the same town. Additionally, TAS employs

many of DPH’s former employees in positions that will result in inevitable disclosures of

trade secrets. See Pepsico, Inc. v. Redmond, 54 F.3d 1262, 1269-70 (7th Cir. 1995)

(concluding that a company made out a case of trade secret misappropriation where an

employee “possessed extensive and intimate knowledge” about strategic goals and

without an “uncanny ability to compartmentalize information” would end up relying on

that knowledge, and likening the situation to one where the company “finds itself in the



                                              4
position of a coach, one of whose players has left, playbook in hand, to join the opposing

team before the big game”). 1

              Appellants’ argument that no non-compete agreements were signed is

irrelevant. Appellants’ liability is not premised on the fact that they competed with DPH,

but rather on the fact that they used DPH’s own confidential information to compete

against them. The new TAS employees have made use of their contact lists developed at

DPH and TAS marketing staff have made direct comparisons between their products and

those of DPH, including telling customers that “basically the same people that produced

[DPH] hybrids . . . will now be producing [TAS] hybrids.”

              The preliminary injunction was narrowly tailored, as it precluded only

unfair competition. The injunction prevented TAS from selling only 21 of its 50 hybrid

seed corn varieties—those that were similar or identical to DPH products. Also, on

reconsideration the Court amended the injunction to allow TAS to sell even the 21




1.       Pen nsylvania courts have not explicitly adopted the inevitable disclosure
doctrine from Pepsico, Inc., but we predict that, under the circumstances, the
Pennsylvania Supreme Court would apply it or some variation thereof. In Air Products
& Chemicals, Inc. v. Johnson, the Superior Court of Pennsylvania affirmed a
preliminary injunction preventing a former employee from disclosing confidential
information to a new employer or participating in certain aspects of his new
em ployment w here disclosure would be a risk. 442 A .2d 1114, 1124-25 (Pa. Super.
Ct. 1982). The Court reasoned that the trial court’s “expression of its determination of
the likelihood of disclosure was proper,” but stopped short of saying disclosure was
“inevitable.” Id. at 1124. Using Air Products as a signpost for when Pennsy lvania
courts are willing to grant an injunction against m isappropriation of trade secrets, w e
conclude that the injunction entered here w as proper.

                                             5
allegedly infringing hybrids as feed corn, provided that it did not disclose the pedigree

and variety to buyers. Similarly, we conclude that the District Court was within its

discretion in refusing to confine the injunction to “the Northeast.”

              Appellants incorrectly characterize the preliminary injunction as a

permanent injunction. The evidence does not support anything more than a speculative

conclusion that the injunction will put TAS out of business. Furthermore, the bond

posted by DPH will reimburse TAS for any hardship suffered because of the injunction, if

it wins the lawsuit on the merits.

              Finally, appellants claim that the District Court erred by excluding an

affidavit from evidence. Appellants gloss over the fact that they first attempted to present

the affidavit at the reconsideration hearing. The District Court was under no obligation to

consider such evidence at that time.

                                            III.

              For the foregoing reasons, we will affirm.




                                              6
_________________________


TO THE CLERK:

           Please file the foregoing opinion.


                                          /s/ Richard L. Nygaard
                                          Circuit Judge




                                          7
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