SHARON LOVELACE BLACKBURN, District Judge.
This case is presently pending before the court on the Motion for a Preliminary Injunction by Defendant Vaxin Inc. (Doc. 29.)
"The purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held." Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981). "A preliminary injunction is an extraordinary and drastic remedy; it is never awarded as of right." Munaf v. Geren, 553 U.S. 674, 689-90 (2008) (internal quotations and citations omitted). Further, granting a preliminary injunction "is the exception rather than the rule." Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000) (quoting Texas v. Seatrain Int'l, S.A., 518 F.2d 175, 179 (5th Cir. 1975)). "In each case, courts must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief." Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 24 (2008) (internal quotations and citations omitted). In this Circuit —
Bloedorn v. Grube, 631 F.3d 1218, 1229 (11th Cir. 2011) (quoting Am. Civil Liberties Union of Fla., Inc. v. Miami-Dade Cnty. Sch. Bd., 557 F.3d 1177, 1198 (11th Cir. 2009). "In exercising their sound discretion, courts of equity should pay particular regard for the public consequences in employing the extraordinary remedy of injunction." Winter, 555 U.S. at 24 (quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312 (1982)).
During his employment with Vaxin, plaintiff signed an Employee Innovation, Non-Competition and Non-Solicitation Agreement ("the Agreement"), (see Doc. 29-1 at 18), which defendant explains as follows:
(Doc. 29 ¶¶ 9-12.) Plaintiff developed a technology called "DVD" during his employment with Vaxin, and defendant contends this technology falls within the definition of both "Proprietary Information" and "Innovation" under the Agreement. (Id. ¶13.) Since the termination of plaintiff's employment with Vaxin, plaintiff has conducted research and published at least two articles about the DVD technology.
The court first notes that defendant's Motion is moot as to its request for an order requiring plaintiff to sign and file a power of attorney in support of a Korean patent application. Plaintiff executed a power of attorney on September 6, 2014. (See Doc. 33 at 5.) Therefore, defendant's Motion on this point will be denied as moot.
Plaintiff next seeks a preliminary injunction enjoining plaintiff from using and disclosing its intellectual property in violation of the Employee Innovation, Non-Competition and Non-Solicitation Agreement ("the Agreement") with Vaxin. (Doc. 29 at 1.)
For the court to grant the requested injunction, defendant must show that all of the following elements are met:
Bloedorn v. Grube, 631 F.3d 1218, 1229 (11th Cir. 2011) (quoting Am. Civil Liberties Union of Fla., Inc. v. Miami-Dade Cnty. Sch. Bd., 557 F.3d 1177, 1198 (11th Cir. 2009). The court finds that defendant has failed to do so.
Count One of defendants' Counterclaim alleges plaintiff breached the Agreement by using and disclosing Proprietary Information and Innovations belonging to Vaxin. While the court finds that defendant likely will succeed on the merits of this claim because plaintiff appears to have validly assigned any rights he may have had in the DVD technology to Vaxin when he signed the Agreement, the court need not decide the issue. Defendant's failure to show irreparable injury is dispositive of defendant's Motion on this issue. See Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir.2000) ("Significantly, even if Plaintiffs establish a likelihood of success on the merits, the absence of a substantial likelihood of irreparable injury would, standing alone, make preliminary injunctive relief improper.").
Defendant contends it "will suffer irreparable harm and damage in the absence of preliminary injunctive relief [because] . . . Vaxin will lose the exclusivity of [the DVD] technology and suffer dilution and confusion regarding its rights to it." (Doc. 19 ¶ 33.) Defendant further alleges that plaintiff's use of the technology to conduct research and publish articles "undermine[s] Vaxin's ability to raise funds and continue its research and development because these activities disparage and call into question Vaxin's ownership of the DVD technology." (Id. ¶ 34.) The only specific injury defendant points to is "a potential transaction with a third party [that] could have fully funded Vaxin," which "fell through in part" due to plaintiff's actions. (Id. ¶ 34.)
Defendant has failed to show why ordinary contract remedies are insufficient to protect its ordinary contract rights. Defendant acknowledges that the potential transaction, discussed above, fell through only "in part" due to plaintiff's action, and defendant has not shown that money damages cannot adequately compensate it for the alleged financial loss it incurred as a result of the unsuccessful deal. The court finds that defendant has not identified an injury that monetary damages could not correct at a later date.
Diamond Power Intern., Inc. v. Clyde Bergemann, Inc., 370 F.Supp.2d 1339, 1349 (N.D. Ga. 2005) (quoting United States v. Jefferson Cnty., 720 F.2d 1511, 1520 (11th Cir.1983)); see also Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1276 (11th Cir. 2001) ("To the extent that Suntrust will suffer monetary harm from the infringement of its copyright, harms that may be remedied through the award of monetary damages are not considered `irreparable.'"). See also Diamond Power Intern., Inc., 370 F. Supp. 2d at 1348-48, for its discussion of Salsbury Labs., Inc. v. Merieux Labs, Inc., 735 F.Supp. 1537, 1543 (M.D. Ga. 1987):
Id. (internal citations omitted).
While defendant attempts to align this case with Medi-Weightloss Franchising USA, LLC v. Medi-Weightloss Clinic of Boca Raton, LLC, No. 8:11-cv-2437-T-30MAP, 2012 WL 260902, (M.D. Fla. Jan. 3, 2012), the comparison is too tenuous. In Medi-Weightloss Franchising, the plaintiffs sought a preliminary injunction against defendants Dr. Martinez and Medi-Boca to enjoin the defendants from continued operation of a weightloss clinic in accordance with a non-compete agreement, from disclosing or publishing plaintiffs' confidential information, from using plaintiffs' proprietary and copyrighted information, from using programs that were confusingly similar to plaintiffs', and from using "Medi" as a trade name. Id. at *1. The court granted a preliminary injunction, finding that plaintiffs had shown irreparable harm from, among other things, "hav[ing] to compete with former franchisees and employees who agreed not to engage in such competition, . . . los[ing] the exclusivity and confidentiality of its proprietary and confidential information, . . . [and] suffer[ing] dilution and confusion associated with its intellectual property as well as its products and services. Id. at *8.
Plaintiff's scientific discussion of the DVD technology in published articles is not analogous to the Medi-Weightloss Franchising plaintiffs' injury from the defendant's continued competition and use of plaintiffs' trademarks. Further defendant has not shown that it has, in fact, "suffer[ed] dilution and confusion" regarding its rights to the DVD technology based on the articles and research already published or that plaintiff intends to publish more articles that could cause defendant to "lose exclusivity of [that] technology" in the future. Simply because plaintiff, who defendant acknowledges developed the DVD technology, discusses the technology in publications does not mean that potential investors will assume that plaintiff holds the rights to the technology.
Additionally, defendant states that, under a clause in the Agreement governing "Injunctive Relief," a violation of the Agreement necessarily results in irreparable damage to Vaxin. (Doc. 29 ¶ 12.) The relevant clause provides that a "breach of any of the promises or agreements contained herein will result in irreparable and continuing damage to Vaxin for which there will be no adequate remedy at law, and Vaxin will be entitled to injunctive relief and/or specific performance, and such other relief as may be proper (including monetary damages if appropriate)." (Doc. 29-1 at 17.) However, the court has not found that plaintiff breached the Agreement, as that decision is reserved for a later stage in the proceedings. Therefore, at this stage, this provision in the Agreement does not overcome binding Eleventh Circuit case law holding that "harms that may be remedied through the award of monetary damages are not considered `irreparable.'" Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1276 (11th Cir. 2001).
If defendant ultimately prevails, an adequate remedy for financial harm incurred as a result of plaintiff's alleged use and disclosure of the DVD technology will be available. The court also notes that its denial of defendant's Motion is without prejudice to defendant's right to seek a preliminary injunction if future circumstances warrant it or if defendant can show non-monetary, irreparable harm under the current circumstances. Further, by denying defendant's Motion, the court does not imply that plaintiff is not required to abide by the contractual obligations of the Agreement. Based on the foregoing, defendant's Motion on this issue will be denied.
Lastly, defendant asks the court to enjoin plaintiff "from making threatening or other communications to Vaxin's directors, officers, shareholders, employees, investors or those otherwise in privity with Vaxin." (Doc. 29 at 1.) Because Vaxin seeks a preliminary injunction on behalf of individuals, the court must first determine if Vaxin has standing to move for the injunction. To have standing to move for an injunction, a party must have suffered an "injury in fact —an invasion of a legally protected interest which is (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical,"—that is fairly traceable to the challenged conduct, and "it must be likely, as opposed to merely speculative, that the injury will be redressed by a favorable decision." Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61(1992) (internal quotations and citation omitted). An association attempting to bring a claim on behalf of its members must also meet the following requirements to have standing: "(a) its members would otherwise have standing to sue in their own right; (b) the interests it seeks to protect are germane to the organization's purpose; and (c) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit." United Food and Commercial Workers Union Local 751 v. Brown Grp., Inc., 517 U.S. 544, 553 (1996) (quoting Hunt v. Wash. State Apple Adver. Com'n, 432 U.S. 333, 343 (1977)).
Defendant has not demonstrated that its "directors, officers, shareholders, employees, agents, attorneys, investors, and those otherwise in privity with Vaxin" have suffered an "injury in fact" that is concrete and particularized and actual or imminent, as opposed to hypothetical, from the alleged threatening communications plaintiff has made. Therefore, defendant Vaxin cannot meet the first prong of the associational standing test, requiring that the individuals on whose behalf Vaxin seeks the injunction "would otherwise have standing to sue in their own right."
However, even if Vaxin had standing, the court finds that the requirements for a preliminary injunction on this issue have not been met. William Enright,
(Doc. 29-1 at 8-9.) While a death threat would create serious alarm likely necessitating the involvement of appropriate law enforcement personnel, plaintiff's communications (at least those provided in the record) do not appear to threaten the safety of defendants or any other party in privity with Vaxin. The court questions the extent to which defendants are concerned for the safety of individuals in privity with Vaxin because defendant briefly raises this concern in the argument section of its brief, stating only that "granting the requested relief [would] promote[] the public interest by ensuring that proper social order is maintained [and] that proper business order is maintained," and that "[p]laintiff's threatening communications . . . undermine Vaxin's ability to attract investment and obtain grants because of the potential risks associated with them." (See Doc. 29 ¶¶ 34, 37.)
At most, plaintiff's communications to defendants may be improper and annoying, but this injury is not the type of irreparable injury for which courts grant the "extraordinary" remedy of a preliminary injunction. Because the court finds that plaintiff's communications do not suggest a serious threat, the court finds that the harm to plaintiff's rights to speak freely in litigation would significantly outweigh the annoyance or inconvenience to defendants from receiving plaintiff's hyperbolic communications and that an injunction would also be adverse to the public interest of protecting speech. See, e.g., Lincoln Mem'l Univ. Duncan Sch. of Law v. Am. Bar Ass'n, 2012 WL 137851, at *19 (11th Cir. Jan. 18, 2012) ("If the Court were to grant the requested preliminary injunctive relief, it seems as though defendant will suffer substantial harm. Particularly, defendant's free speech rights will be compromised, and the Supreme Court has noted that interference with free speech, `for even minimal periods of time, unquestionably constitutes irreparable injury.'") (quoting Elrod v. Burns, 427 U.S. 347, 373 (1976)). Therefore, the court finds that defendant's request for the court to enjoin plaintiff from sending threatening communications to individuals connected with Vaxin is due to be denied.
Defendant Vaxin's Motion for a Preliminary Injunction, (Doc. 29), is due to be denied. An order in accordance will be entered contemporaneously with this Memorandum Opinion.
