United States District Court, W.D. Washington, Seattle
Honorable Richard A. Jones United States District Judge
matter comes before the Court on Plaintiff Digital Mentor,
Inc.'s (“Digital”) Motion for Temporary
Restraining Order and Preliminary Injunction and Motion for
Expedited Discovery. Dkt. # 11. For the reasons that follow,
the Court GRANTS Plaintiff's Motion for
Temporary Restraining Order and DENIES
Plaintiff's Motion for Expedited Discovery.
is an engineering consulting service with its principal place
of business in Incline Village, Nevada. Digital is registered
to do business in the state of Washington. Dkt. # 1 ¶ 1.
Digital developed a mobile computing system, DigitalMentor,
for the waste and wastewater industry to allow companies to
monitor and maintain their equipment on mobile devices.
Id. Defendant Ovivo USA, LLC provides equipment for
water and wastewater treatment facilities throughout the
United States and around the world. Id. ¶ 2.
Defendant Ovivo U.S. Holding Inc. is a Delaware corporation
that owns Ovivo USA, LLC. Defendant Ovivo, Inc., is a
Canadian corporation that owns Ovivo U.S. Holding Inc.
Id. ¶ 3. Defendant Valere Morissette is Vice
President of Ovivo USA, LLC. Id. ¶ 6. Defendant
Marc Barbeau is President of Ovivo USA, LLC, and President
and CEO of Ovivo, Inc. Id. ¶ 7.
March of 2014, Digital marketed DigitalMentor to Defendants
for use in their facilities and in conjunction with the sale
of their equipment. The parties then entered into a licensing
agreement. Pursuant to that licensing agreement, Digital
agreed to create and license DigitalMentor for
Defendants' facilities and customers under the name
“digitalOPS” and Defendants granted Digital a
non-exclusive limited license to Defendants' Standard
Operating Procedures (“SOP”), manuals, technical
drawings, etc. Dkt. # 11-1 at 10; Dkt. # 23 at 5. On or about
November 1, 2014, Digital and Ovivo entered into a
Non-Disclosure Agreement (“NDA”). Digital claims
that, while under these contracts, Defendants copied
DigitalMentor and created a “pirated” version of
this product called, WaterExpert.
December 29, 2017, Digital filed a Complaint against
Defendants seeking injunctive relief, alleging that
Defendants violated the Defend Trade Secrets Act, 18 U.S.C.
1836, et seq. (“DTSA”), the Racketeer
Influenced and Corrupt Organizations Act ("RICO”),
18 U.S.C. 1961, et seq., and committed trademark and
copyright infringement. Digital also brings a breach of
contract claim and several other state law claims.
temporary restraining order is an “extraordinary remedy
that may only be awarded upon a clear showing that the
plaintiff is entitled to such relief.” Winter v.
Nat. Res. Def. Council, Inc., 555 U.S. 7, 22
(2008). To obtain a temporary restraining order,
Digital must show that (1) it is likely to succeed on the
merits, (2) it is likely to suffer irreparable harm in the
absence of preliminary relief, (3) the balance of equities
tips in its favor, and (4) an injunction is in the public
interest. Stormans, Inc. v. Selecky, 586 F.3d 1109,
1127 (9th Cir. 2009).
Court finds that Digital demonstrated a likelihood of success
on its breach of contract claim. The parties entered into a
Master Agreement in conjunction with the NDA. The NDA states
that information that Digital revealed to Defendants
regarding DigitalMentor is confidential and that Defendants
are not to copy the software disclosed by Digital to
Defendants under the terms of the agreement. Dkt. # 11 Ex. A.
Digital contends that Defendants used their access to
DigitalMentor pursuant to the Master Agreement to steal
Digital's technology in violation of the NDA. Defendants
do not dispute that there was a contract between the parties,
only that the development of WaterExpert does not violate the
contract. Defendants argue that they did not breach the NDA
because any information used by them was not confidential
because Digital was “extensively” marketing
DigitalMentor, or was their intellectual property to use
based on the terms of the Master Agreement.
on the information available on the record at this time,
Defendants' arguments are not convincing. Demonstrating
and marketing a product does not immediately make the
underlying technology of that product publicly available and
free from the designation of confidential or proprietary.
Defendants' claim that similarities between WaterExpert
and DigitalMentor are merely a result of similar subject
matter is similarly unconvincing. Digital's claim alleges
similarities beyond the utility of both mobile computing
systems in the water and wastewater treatment industries.
Dkt. # 11-1 at 18.
will also suffer irreparable harm if its motion for a
temporary restraining order is not granted. Digital is a
small software engineering startup that developed
DigitalMentor through personal labor, financial investment
and development of expertise in the industry. Digital argues
that Defendants' dominant position in the water and
wastewater treatment industry has the potential to push
Digital out of the market and has already substantially
negatively impacted Digital's revenue and sales. In the
absence of a temporary restraining order, the future of
Digital as a company might be in danger.
Defendants' competitive advantage over Digital, the
balance of equities tips in Digital's favor. A temporary
restraining order would preserve the status quo until the
preliminary injunction hearing is held. Further, granting the
temporary restraining order would be in the public interest.
There is a public interest in upholding NDA's, protecting
intellectual property, and discouraging unfair business
practices. Accordingly, the Court GRANTS
Digital's Motion for a Temporary Restraining Order. Dkt.
Court ORDERS that each properly served
Defendant and their officers, agents, servants,
employees and attorneys, and all those acting in concert or
participating with them, are restrained and enjoined from
engaging in, committing or performing, either directly or
indirectly, any and all of the following:
1. Using, disclosing, reproducing, summarizing, distributing,
reverse engineering, decompiling and/or disassembling Digital
Mentor's confidential trade ...