In Hallmark Cards Inc. v. Monitor Clipper Partners LLC et al., 2014 WL 3409953 (8th Cir. July 15, 2014), the U.S. Court of Appeals for the Eighth Circuit affirmed a $31.3 million dollar jury verdict, which included $10 million in punitive damages, in favor of Hallmark Cards, Inc. (“Hallmark”) against a private equity firm known as Monitor Clipper Partners LLC, which was found to have misappropriated confidential information from Hallmark, including data from Power Point presentations. Hallmark’s Power Point presentations were also found to constitute trade secrets under the Missouri Uniform Trade Secrets Act (Mo. Rev. Stat. 417.450 et seq.).
Summary of the Case
Hallmark hired a Boston-based consulting company known as Monitor Company Group, L.P. (“Monitor”) to compile research on the greeting cards market. Monitor then created several PowerPoint presentations to summarize its findings, and both Hallmark and Monitor signed confidentiality agreements to make the market research material confidential. Monitor then transmitted this confidential market research it had performed for Hallmark to another private equity firm known as Monitor Clipper Partners, LLC (“Clipper”). Clipper was a private equity firm founded by two of Monitor’s original partners and was also located in the same office building. Furthermore, Clipper’s primary investment strategy was to use Monitor’s expertise in consulting various clients to understand specific fields or markets. Clipper then all of a sudden became interested in entering the greeting cards market, and used the confidential market research information prepared by Monitor to buy one of Hallmark’s competitors known as Recycled Paper Greetings, Inc (RPG). Clipper also used data from at least five PowerPoint presentations prepared by Monitor to inform and finance its bid for RPG, which it won. After Clipper bought RPG, Hallmark began to suspect that Monitor had disclosed the confidential research on the greeting cards market to Clipper. After an arbitration which led to a settlement between Hallmark and Monitor of $16.6 million, Hallmark then filed suit against both Monitor (for breach of contract) and Clipper (for the theft of trade secrets in violation of the Missouri Uniform Trade Secrets Act) in the U.S. District Court for the Western District of Missouri. The jury in the trial court case awarded Hallmark both $21.3 million in compensatory damages and $10 million in punitive damages against Clipper. After the trial, Clipper moved for judgment as a matter of law and to amend the verdict. The district court denied both motions and Clipper appealed to the Eighth Circuit.
The Court’s Rationale
The decision is essentially divided into the alleged trade secrets claim and the double recovery/punitive damages claim.
Alleged Trade Secrets
For the trade secrets claim, Clipper argued that Hallmark’s PowerPoint presentations were not trade secrets under the Missouri Uniform Trade Secrets Act because (1) Hallmark had publicly disclosed one of the conclusions contained in the PowerPoint presentations, thereby destroying any claim that power point presentations were trade secrets, and (2) four years had elapsed between the time that the PowerPoint presentations were created and the time of alleged trade secret misappropriation: thus, such information was already stale and of no economic value when Clipper allegedly misappropriated it. The court concluded that the jury had sufficient evidence to find that Hallmark’s PowerPoint presentations were trade secrets under the Missouri Uniform Trade Secrets Act. In response to (1), the court held that although Hallmark may have revealed one of the conclusions in the presentations, it did not reveal the underlying data supporting that conclusion or any methodology used to reach such a conclusion. In response to (2), the court held that information on the greeting card market was very limited even at the time of Clipper’s alleged misappropriation (2005) and that this scarcity of data made even a four year old PowerPoint presentation valuable.
Clipper also argued that the jury verdict in the district court case amounted to a double recovery for Hallmark because Hallmark had already settled a similar claim against Monitor for $16.6 million and after going to trial, was also awarded another $31.3 million in damages against Clipper. The court rejected this argument and held that the arbitration award and the trial award were two separate awards for two separate, independent injuries. Therefore, no reduction of the jury award was necessary, and punitive damages against Clipper were permissible under Missouri law as long as the defendant acted with reckless disregard for Hallmark’s rights and the Due Process clause. Accordingly, the court affirmed the district court’s denial of Clipper’s motion for judgment as a matter of law and, alternatively, to amend the judgment. The court also affirmed the $31.3 million jury trial verdict.
As can be seen by this case, there can be large awards around the order of $31.3 million made in particularly egregious trade secret misappropriation cases, even for the theft of PowerPoint presentations. This serves as a reminder to potential trade secret thieves who may believe that such trade secret misappropriation may be all part of an aggressive but fair business strategy. Especially considering a market as competitive as the greeting card business, such damages may be viewed as appropriate in compensating parties harmed by trade secret misappropriation.