United States District Court, W.D. Wisconsin
OPINION AND ORDER
WILLIAM M. CONLEY District Judge
On April 14, 2016, the jury returned a liability special verdict in favor of plaintiff Epic Systems Corporation on all seven claims. For purposes of ordering injunctive relief specifically, the jury found defendants Tata Consultancy Services Limited and Tata America International Corporation liable for (1) misappropriation under Wisconsin Uniform Trade Secrets, Wis.Stat. § 134.90, and (2) trafficking passwords in violation of the Computer Fraud and Abuse Act, 18 U.S.C. § 1030. At summary judgment, the court also entered liability in plaintiff’s favor on another CFAA claim, as well as on its claim under Wisconsin Computer Crime Act, Wis.Stat. § 943.70, for which injunctive relief is the only available remedy.
In light of plaintiff’s success on the merits and the inadequacy of damages to remedy any future benefit defendants may obtain from their unlawful acts, the balance of equities lean heavily in favor of entry of an injunction. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). Moreover, the public’s interest in protecting trade secrets and other confidential information further supports entry of a permanent injunction. See Id. Finally, defendants do not even attempt to argue against the entry of an injunction in light of the jury’s verdict (Defs.’ Resp. (dkt. #885) 1 (acknowledging that an injunction “will be entered”)), but rather raise specific concerns with respect to plaintiff’s proposed injunction.
First, defendants oppose the listing of all of the claims for which liability was entered in plaintiff’s favor, rather than simply the causes of action that form the basis for entry of injunctive relief. This request is mooted by the court’s decision to drop plaintiff’s proposed preamble.
Second, defendants challenge the combined definition of “Trade Secrets and Confidential Information” in plaintiff’s proposed agenda, arguing that there should be two distinct definitions, consistent with the trial record. Once again, given that the court is enjoining the use of both, defendants’ request may be unnecessary, but will be granted in keeping with the two, distinct definitions in Epic’s original allegations, the statutory text, and the express instructions to the jury at trial. The following permanent injunction, therefore, adopts defendants’ proposed language.
Third, defendants take issue with some of the prohibited conduct. Specifically, defendants contend that their attorneys should not be enjoined from retaining and using any trade secrets and confidential information to prepare an appeal or for other legitimate, legal purposes. The court agrees, and, therefore, excludes this conduct from the scope of the permanent injunction entered below. Defendants next suggest a modification of the definition of electronic health records, but offer no basis for this change, and the court sees no reason to adopt it. Similarly, defendants suggest a change to some of the provisions prohibiting “TCS employees, ” rather than TCS more generally. Once again, defendants offer no basis for this proposed change. If anything, the proposed modification could be seen as limiting the scope of the injunction. Because the court rejects the change to “TCS employees, ” it also need not adopt TCS’s proposed changes to address differences in the level of responsibility or control TCS has over its employees beyond that dictated by law. Last, defendants take issue with plaintiff including “or may have had access” to any Epic Trade Secret or Confidential Information in the provision prohibiting TCS employees from working on the design, development, enhancement or marketing of TCS software products. The court agrees with defendants that this phrase is too vague and deleted it. Should plaintiff also wish to list specific individuals, as defendants suggest, the court would also be willing to make that modification and issue an amended permanent injunction.
Fourth, defendants oppose the appointment of an ombudsman or monitor as unnecessary, and if appointed, propose several modifications. The court agrees with plaintiff that a monitor is necessary to insure compliance with the court’s injunction in light of the extent of unauthorized and undocumented access to its trade secrets and confidential information within TCS. As for defendants’ specific concerns, a monitor shall be appointed by the court based on the parties’ joint submission if they agree or separate submissions if not jointly agreed. A joint submission or the parties’ separate submissions are due on or before May 11, 2016. While plaintiff will be allowed to direct the monitor’s activities, consistent with those outlined in the permanent injunction, plaintiff will not be privy to the outcome of that review, except for disclosure of any evidence of a violation of the permanent injunction itself, and defendants may seek relief from the court if they believe the monitor’s activities exceed the parameters of the injunction. Moreover, this provision of the court’s permanent injunction will last for two years, with the possibility of a two-year extension at the end of that period.
IT IS ORDERED that plaintiff Epic Systems Corporation’s request for entry of permanent injunction is GRANTED and a Permanent Injunction pursuant to Federal Rule of Civil Procedure 65 is ENTERED as follows:
1. This Permanent Injunction shall remain in full force and effect for four years from its effective date of this order.
2. For purposes of this Permanent Injunction, the following terms apply:
a. “Epic” shall mean plaintiff Epic Systems Corporation.
b. “TCS” shall mean Tata Consultancy Services Limited and Tata America International Corporation.
c. “Trade Secret” shall mean the documents contained in Trial Exhibit No. 1247, limited to those documents (or portions of such documents) that are a trade secret as defined in the Wisconsin ...