United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
A. ROSS UNITED STATES DISTRICT JUDGE.
matter is before the Court on Plaintiffs Phyllis Schlafly
Revocable Trust ("Trust") and Eagle Trust
Fund's ("Eagle Trust") (collectively,
"Plaintiffs") emergency motion for temporary
restraining order ("TRO") and preliminary
injunction, filed with the Court on November 3, 2016. (Doc.
No. 7) On November 7, 2016, Defendants Ann Schlafly Cori,
Eunie Smith, Cathie Adams, Carolyn McLarty, Rosina Kovar and
Shirley Curry ("Defendants") filed a response in
opposition to the motion, and the Court held oral argument.
Plaintiffs thereafter filed a reply. (Doc. No. 26) For the
following reasons, Plaintiffs' motion will be denied.
procedural history of this case is complex, as the parties
(generally) are litigating two other cases in the geographic
area. In one of these cases, an Illinois State court entered
a TRO in April 2016 restraining Edward Martin, John Schlafly,
and Eagle Forum (non-parties in this action) from interfering
with Defendants' access to any and all property of Eagle
Forum, an organization that competes with Plaintiffs.
Cori v. Martin, 2016MR000111 (111. Cir. Ct. Oct. 20,
2016); (Doc. No. 7-6 at 1-2). On October 20, 2016, the
Illinois court amended the TRO, and afforded Defendants
herein, in their capacities as the majority members of the
Eagle Forum Board of Directors, temporary sole control and
possession over all Eagle Forum property, including a list of
14, 000 active Eagle Forum members and 41, 000 email
addresses, the Eagle Forum domain (eagleforum.org)
and email, and financial and deposit accounts. (Doc. No. 7-6
on October 19, 2016, Plaintiffs filed suit in this Court,
asserting causes of action for violations of the Defend Trade
Secrets Act, 18 U.S.C. § 1836; the Missouri Uniform
Trade Secrets Act, Mo. Rev. Stat. §417.455 et.
seq.; the Lanham Act, 15 U.S.C. §§ 1114(1),
1125(a); declaratory judgment under 28 U.S.C. § 2201;
and claims under Missouri common law. (Doc. No. 1).
Underlying each of Plaintiffs' claims is an allegation
that one or more Defendants, or persons acting on behalf of
Defendants, have impermissibly accessed, misappropriated, and
used Plaintiffs' intellectual property.
following relevant facts are set forth in Plaintiffs'
complaint and emergency motion for temporary restraining
order and preliminary injunction. (Doc. Nos. 1, 7) According
to Plaintiffs, two Trust employees, Elizabeth Miller and Ann
Bensman, have misappropriated Plaintiffs' trade secrets
and are sharing them with Defendants. Plaintiffs assert that
Defendants' actions threaten the proprietary nature and
confidentiality of a database of contact information (the
"Database") which Defendants use for direct mail
and fundraising efforts promoting causes supported by Phyllis
Schlafly ("Mrs. Schlafly"). Plaintiffs assert that,
in the Illinois case, Miller and Bensman have misrepresented
themselves as employees of, Missouri Eagle Forum. Plaintiffs
further claim that, on October 31, 2016, they directed Miller
and Bensman to report to a different office, held a meeting
at which they were reminded of the proprietary nature of the
Database, directed to return their passwords, and asked to
sign an acknowledgement of the confidentiality of the
information. Plaintiffs also allege that Miller and Bensman
refused, and they have neither returned to work nor
relinquished their passwords. Plaintiffs contend that partial
lists of the Database were created when these employees had
access to the Database, and Plaintiffs express concern that
Miller and Bensman may have copied these partial lists.
November 3, 2016, Plaintiffs filed the instant emergency
motion for temporary restraining order and preliminary
injunction. (Doc. No. 7) In their motion, Plaintiffs ask that
the Court enjoin Defendants from using the likeness and image
of Phyllis Schlafly; enjoin Defendants from distributing,
using, or disseminating the Database and any other
confidential trade secrets of Mrs. Schlafly; and require
Defendants to list and return confidential and proprietary
trade secrets of Mrs. Schlafly, including the Database. In
response, Defendants argue that the intellectual property at
issue belongs to Eagle Forum, and is already subject to the
Illinois court's TRO.
determining whether to issue a TRO, the Court must consider
the following four factors: (1) the threat of irreparable
harm to the movants; (2) the balance between this harm and
the injury that granting the injunction will inflict on other
parties litigant; (3) the probability that movants will
succeed on the merits; and (4) the public interest.
Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d
109, 113 (8th Cir. 1981) (en banc). "While no single
factor is determinative, the probability of success factor is
the most significant." Home Instead, Inc. v.
Florance, 721 F.3d 494, 497 (8th Cir. 2013) (citation
omitted). The party requesting injunctive relief bears the
"complete burden" of proving that an injunction
should be granted. Gelco Corp. v. Coniston Partners,
811 F.2d 414, 418 (8th Cir. 1987).
Likelihood of Success on the Merits
Court concludes that Plaintiffs have not met their burden of
establishing a reasonable likelihood of success on the merits
of their claims. In Count I of the Complaint, Plaintiffs
bring a trade secret misappropriation claim under the Defend
Trade Secrets Act of 2016 ("DTSA"), which creates a
private cause of action in favor of the "owner of a
trade secret that is misappropriated ... if the trade secret
is related to a product or service used in, or intended for
use in, interstate or foreign commerce." 18 U.S.C.
§ 1836(b)(1). In Count V, Plaintiffs bring a trade
secret misappropriation claim under the Missouri Uniform
Trade Secrets Act ("MUTSA"), V.A.M.S. §
417.450 et seq. The elements of Plaintiffs' trade secret
misappropriation claims under the DTSA and MUTSA are
essentially the same. In order to prevail on a claim for
misappropriation of a trade secret, a plaintiff must show:
(1) the existence of a protectable trade secret; (2)
misappropriation of those trade secrets by the defendant; and
secret is defined by the DTSA and MUTSA as "information,
" including "compilations, " that meets two
qualifications: (a) the owner thereof has taken reasonable
measures to keep such information secret; and (b) the
information derives independent economic value, actual or
potential, from not being generally known to, and not being
readily ascertainable through proper means by, another person
who can obtain economic value from its disclosure or use.
See 18 U.S.C. § 1839(3); V.A.M.S. §
417.453(4). A misappropriation occurs when: (1) a person
acquires the trade secret while knowing or having reason to
know that he or she is doing so by improper means, (2) a
person who has acquired or derived knowledge of the trade
secret discloses it without the owner's consent, or (3)
when a person who has acquired or derived knowledge of the
trade secret uses it without the owner's consent. See
Mission Measurement Corp. v. Blackbaud, Inc., No. 16 C
6003, 2016 WL 6277496, at *4 (N.D. 111. Oct. 27, 2016)
(quoting Syntel Sterling Best Shores Mauritius Ltd. v.
Trizetto Grp., Inc., No. 15CV211, 2016 WL 5338550, at *6
(S.D.N.Y. Sept. 23, 2016) (citing 18 U.S.C. § 1839(5));
Cent. Trust & Inv. Co. v. Signalpoint Asset Mgmt.,
LLC, 422 S.W.3d312, 322 (Mo. 2014).
Counts II, III, and IV of the Complaint, Plaintiffs bring
claims for trademark infringement, unfair competition, and
trademark dilution under the Lanham Act, 15 U.S.C.
§§ 1114, 1125. To prevail on a claim of trademark
infringement under 15 U.S.C. § 1114(1), a plaintiff must
establish that (1) it owns a valid, protectable mark, (2)
that defendants have used the mark in commerce without the
plaintiffs consent; and (3) that there is a likelihood of
confusion between the plaintiffs mark and the defendant's
mark. 15 U.S.C. § 1114(1); B & B Hardware, Inc.
v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir.
2009); JDR Indus., Inc. v. McDowell, 121 F.Supp.3d
872, 882 (D. Neb. 2015). A claim of unfair competition under
15 U.S.C. § 1125(a)(1) has essentially the same
elements. 15 U.S.C. § 1125(a)(1); Davis v. Walt
Disney Co., 430 F.3d 901, 903 (8th Cir. 2005).
order to prevail on any of these claims, Plaintiffs have to
establish the threshold issue of ownership of a protected
trade secret or trademark. Here, there are significant
factual disputes not only as ...