Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 1 of 17 PageID #: 1107
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF WEST VIRGINIA
`CHARLESTON DIVISION
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`ELGIN SEPARATION SOLUTIONS, LLC, et al.,
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`Plaintiffs,
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`CIVIL ACTION NO. 2:23-cv-00440
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`v.
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`DAVID CHADWICK DILLON, et al.,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`The Court has reviewed the Plaintiffs’ Motion for Preliminary Injunction (Document 24),
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`the Memorandum in Support of Motion for Preliminary Injunction (Document 37), Defendant
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`David Chadwick Dillon and Dillon Industries, Inc.’s Response to Elgin Separation Solutions,
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`LLC’s Motion for Preliminary Injunction (Document 41), Defendant Donald Ritchie’s Joinder in
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`David Chadwick Dillon and Dillon Industries, Inc.’s Response to Elgin Separatin (sic) Solutions,
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`LLC’s Motion for Preliminary Injunction (Document 42), the Plaintiffs’ Reply in Support of Their
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`Motion for Preliminary Injunction (Document 43), as well as all attached exhibits. For the
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`reasons stated herein, the Court finds that the motion for a preliminary injunction should be denied.
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`FACTS1
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`The Plaintiffs are Elgin Separation Solutions, LLC, and CMS/CSI LLC, formerly known
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`as Centrifugal Services, LLC (collectively, “Plaintiffs” or “Elgin”). The Defendants are Dillon
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`1 For purposes of the motion for a preliminary injunction, the facts are drawn from the evidentiary exhibits. No facts
`material to the consideration of the motion for a preliminary injunction are disputed, and the Court finds that a hearing
`would not be helpful to resolve the motion.
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`1
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`Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 2 of 17 PageID #: 1108
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`Industries, Inc., its owner Chad Dillon, and employee Don Ritchie. Mr. Dillon and Mr. Ritchie
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`are former Elgin employees. Mr. Dillon left Elgin to form his company, Dillon Industries
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`(“Dillon”); Mr. Ritchie left Elgin to work at Dillon. Although not the sole focus of their work,
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`Elgin and Dillon are both in the business of repairing and manufacturing specialized processing
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`equipment; specifically, decanter centrifuges.
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`Decanter centrifuges are mechanical devices used to separate solids from slurries in
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`industrial processes, including coal mining and rendering. The decanter centrifuges that Dillon
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`and Elgin repair are often decades old. Accordingly, Elgin and Dillon repair and build new
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`decanter centrifuges based on designs, or drawings, created by other companies often referred to
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`as Original Equipment Manufacturers (“OEM”). For example, Elgin produces “BYRD Style
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`Centrifuges,” which are based on equipment originally designed and manufactured by Bird
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`Machine Company (“Bird”), an OEM, in the 1960s. Elgin is not alone. Several companies in
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`the Kanawha Valley, where Elgin and Dillon are based, have also repaired, manufactured, or
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`supplied parts for Bird centrifuges. As a result, Dillon contends OEM drawings and other
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`companies’ drawings of Bird centrifuges are readily available throughout the area. (Document
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`41-1 at 1–2.) Drawings are not required to perform repairs but are typically required to build new
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`decanter centrifuges because they describe the location and size of the parts making up the decanter
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`centrifuge. If OEM or similar drawings are not available, a drawing can be created by reverse
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`engineering the equipment. This involves taking apart the existing decanter centrifuge, measuring
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`the parts, and creating a new drawing. Dillon asserts that this is a common industry practice used
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`by both Elgin and Dillon. (Id. at 2). Elgin claims that, as part of this practice, it improves upon
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`equipment in order to outperform its peers. (Document 37 at 2). Although Elgin acknowledges
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`2
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`Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 3 of 17 PageID #: 1109
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`that redesigning and improving upon competitor products is common in the industry, Elgin
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`maintains the exact manner in which it conducts its redesign process is confidential and
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`proprietary. (Id.).
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`Mr. Dillon became involved in the business of repairing decanter centrifuges at an early
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`age when he began working at his father’s business, Industrial Process Equipment, in St. Albans,
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`West Virginia. He eventually joined the family business full time and later took it over and
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`expanded it significantly. Due to his management skills and relationships with customers and
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`employees, Mr. Dillon found success in the industry. (Document 41-1 at 3.)
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`In 2013, Mr. Dillon sold the family business to Centrifugal Services, an Elgin subsidiary.
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`At that time, the parties entered into two contracts: (1) an Asset Purchase and Contribution
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`Agreement (the “APC Agreement”) governing the sale of the business, and (2) an Employment
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`Agreement governing Mr. Dillon’s employment with Elgin. Mr. Dillon did not seek
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`compensation in the sale for drawings or intellectual property beyond that listed in the APC
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`Agreement, namely: “(i) corporate name; (ii) telephone number; (iii) facsimile number; (iv)
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`domain numbers; (v) websites; and (vi) common law right to the company logo.” (Documents
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`41-1 at 2; 21-1.) Following the sale, Mr. Dillon continued running the business as president of
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`Elgin’s Poca, West Virginia, division. In this position, he oversaw all facility operations,
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`including the development and maintenance of customer relationships, defining the roles and
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`responsibilities of the workforce, recruitment and hiring, and ensuring compliance with industry
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`and customer standards. As a result, Elgin asserts that it came to entrust Mr. Dillon with its
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`confidential information, customers, and suppliers. (See Document 37 at 7.)
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`In November 2021, Mr. Dillon decided to leave Elgin with the intention of starting his own
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`competing business. Elgin requested he stay on until Elgin found a suitable replacement, to which
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`Mr. Dillon agreed on the condition that the one-year non-competition and non-solicitation
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`provisions in his Employment Agreement would begin to run from the effective date of his
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`resignation, December 14, 2021. Elgin does not dispute that the one-year period began to run
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`from this time. During this period, Mr. Dillon attests that he prepared to compete with Elgin by
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`arranging office space, equipment, and financing for his new business, but was careful not to
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`compete with Elgin or solicit Elgin employees. (Document 41-1 at 3.)2 Mr. Dillon admits that
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`he executed purchase orders for some Elgin customers, but maintains the orders were for shafts, a
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`product Elgin does not sell. (Id.) In April 2022, Mr. Dillon forwarded an email from his Elgin
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`email account to his Dillon Industries email account which contained a copy of a 24x60 Manual
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`which Elgin had previously prepared in response to a customer request. Dillon asserts that it has
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`never used the Manual. (Document 41-1 at 5.) Upon later discovering this email, Elgin initiated
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`the process of registering its copyright in the 24x60 Manual. Two days after the United States
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`Copyright Office granted Elgin’s application, Elgin initiated the present suit.
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`Around October or December 2022, Elgin found a suitable replacement for Mr. Dillon, and
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`Mr. Dillon left his employment with Elgin. On December 14, 2022, the one-year restrictive
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`covenant period expired. Dillon Industries placed an ad for employment online the next day, at
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`which time Dillon maintains several Elgin employees learned about the ad and applied to work for
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`Dillon. Dillon hired some of these employees. In January 2023, Mr. Dillon claims he received
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`2 Elgin submitted the affidavit of Christopher Henley, a General Manager at Elgin’s Poca division, in support of its
`contention that Dillon solicited Elgin employees. (See Document 37 at 59). Henley’s affidavit states without further
`support that Dillon contacted “many Elgin employees, offering them 10% more than their current salary” to resign.
`(Id.)
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`a call from Elgin’s CEO with a request to cease hiring former Elgin employees. (Document 41-
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`1 at 4.) Mr. Dillon completed the hiring of two Elgin employees to whom he had previously
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`extended offers but maintains that since then he has ceased hiring Elgin employees.
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`Mr. Ritchie is a machinist by trade and is proficient in the use of computer-aided drawing
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`programs, such as AutoCAD. (Document 41-2 at 1.) He previously worked for a company
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`called Control Point where he acquired and created drawings of decanter centrifuges. (Id.) In
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`2018, Ritchie began working at Elgin’s Poca Division and claims he brought with him many of
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`the drawings he created at Control Point. (Id.) Ritchie’s job duties at Elgin involved creating
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`and modifying drawings, assisting in the drafting of maintenance and operations manuals,
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`procurement, and issuing work orders. Following Mr. Dillon’s departure, Ritchie attests that he
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`found the Poca Division to be a difficult place to work. According to Ritchie, business was
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`disorganized, and customers were unhappy. (Id.) Consequently, he claims he reached out to Mr.
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`Dillon and asked to work for Dillon Industries. Mr. Dillon initially advised against leaving Elgin,
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`citing his inability to pay Ritchie the same salary and benefits. (Id. at 2). However, Mr. Dillon
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`eventually agreed, and Ritchie left Elgin in January 2023 to work for Dillon. Upon his
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`resignation, Ritchie returned one external hard drive to Elgin. Prior to leaving, however, he
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`downloaded drawings he claims he acquired or created while at Control Point and Elgin. (Id.).
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`Elgin represents that a forensic investigation revealed Ritchie connected fifteen different external
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`drives to his work computer. (Document 37 at 20.) Ritchie does not dispute this number but
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`maintains that he has diligently searched for these devices and found only six thumb drives in his
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`possession, which he returned to Elgin for further examination. (Document 41-2 at 2–3).
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`In March 2023, Elgin, through counsel, sent a cease-and-desist letter to Dillon demanding
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`he cease competing with Elgin, soliciting Elgin employees, and using Elgin’s confidential
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`information. Mr. Dillon disputed these allegations but contends he cooperated in the
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`identification and return of such material. (Document 41 at 12). In a letter to Elgin’s counsel,
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`Mr. Dillon identified, through counsel, headings on an Excel spreadsheet developed by Elgin,
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`Elgin drawings, and copies of “progress photographs” used to document repairs by Elgin. He
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`maintains Dillon never used the progress photographs, and he assured Elgin that Dillon would
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`cease using the spreadsheet in its current form and return or destroy the drawings and photographs.
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`(See Document 37 at 72.) In May 2023, Mr. Dillon voluntarily alerted Elgin’s counsel that he
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`had discovered additional drawings on an employee’s computer, and that the drawings would be
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`returned to Elgin and all other copies destroyed. (See id. at 83.) Mr. Dillon advised Elgin that
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`Dillon had initially used relabeled Elgin drawings to obtain quotes for parts, but further assured
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`Elgin that Dillon had since ceased using any Elgin drawings in its business dealings. (See id. at
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`113–14.) He has expressed his willingness to participate in a remediation process by which Elgin
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`could locate any of its information remaining on Dillon’s email account and erase it. (Document
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`41-1 at 5.) Mr. Dillon also agreed to return the six thumb drives discovered in Ritchie’s
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`possession. (Document 37 at 113–15.) Despite the Defendants’ assurances to the contrary, Elgin
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`maintains that Dillon is still in possession of Elgin’s confidential information. Accordingly, on
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`June 16, 2023, Elgin initiated the instant matter.
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`The Amended Verified Complaint asserts the following causes of action: Count I:
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`Violation of the Defend Trade Secrets Act; Count II: Violation of the West Virginia Uniform Trade
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`Secrets Act; Count III: Copyright Infringement (as to Mr. Dillon and Dillon Industries); Count IV:
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`Breach of Contract – APC Agreement (as to Mr. Dillon); Count V: Breach of Contract –
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`Employment Agreement (as to Mr. Dillon); Count VI: Breach of Fiduciary Duty (as to Mr. Dillon);
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`Count VII: Tortious Interference (as to Mr. Dillon); Count VIII: Breach of Fiduciary Duty (as to
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`Mr. Ritchie); and Count IX: False Designation of Origin – Lanham Act.
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`Elgin urges the Court to enter a preliminary injunction:
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`(i) enjoining Defendants from using, disclosing, or further accessing Elgin’s
`copyrights, trade secrets and confidential information, including copying,
`modifying or using any documents in their possession, which were taken from
`Elgin; (ii) enjoining Defendants from destroying, deleting, or failing to retain copies
`of Elgin’s copyrights or its trade secrets, documents, and information, (iii)
`enjoining Defendants from doing business with Darling Ingredients, Paragon ISG
`and any other Elgin customer that is the subject of the information misappropriated
`from Elgin; (iv) enjoining Defendants from doing business with Elgin’s suppliers;
`and (v) enjoying Defendants from soliciting Elgin’s employees.
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`(Document 37 at 43.) Dillon contends injunctive relief is unnecessary to the extent that it has
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`already voluntarily complied with Elgin’s first, second, and fifth requests, but notes that it remains
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`“willing to work out an Agreed Order that can be monitored by the Court” as to any remaining
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`issues. (Document 41 at 30–31.)
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`APPLICABLE LAW
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`Rule 65(a)(1) of the Federal Rules of Civil Procedure provides that a preliminary injunction
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`may be issued “only on notice to the adverse party.” Fed. R. Civ. P. 65(a)(1). The Defendants
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`have appeared and responded in this matter.
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`“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on
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`the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the
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`balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Nat.
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`Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). Plaintiffs must satisfy all four requirements. JAK
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`Prods., Inc. v. Bayer, 616 F. App’x 94, 95 (4th Cir. 2015) (unpublished, per curiam opinion); Real
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`Truth About Obama, Inc. v. Fed. Election Comm’n, 575 F.3d 342, 346 (4th Cir. 2009), cert.
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`granted, judgment vacated, 559 U.S. 1089, 130 S. Ct. 2371, 176 L. Ed. 2d 764 (2010), and adhered
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`to in part sub nom. The Real Truth About Obama, Inc. v. F.E.C., 607 F.3d 355 (4th Cir. 2010).
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`Thus, injunctive relief is “an extraordinary remedy that may only be awarded upon a clear showing
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`that the plaintiff is entitled to such relief.” Winter, 555 U.S. at 22.
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`DISCUSSION
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`Elgin urges the Court to enter a preliminary injunction to prevent the Defendants from
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`doing business with Elgin’s customers and suppliers and to require the Defendants to cease using
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`any of Elgin’s information still in their possession, including any works the Defendants have
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`created using Elgin information or created while in possession of Elgin’s information. Elgin
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`contends it has established prima facie cases as to each of its claims and is thus likely to succeed
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`on the merits of each claim at trial. Elgin further asserts that it has clearly demonstrated a
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`likelihood of irreparable harm in the absence of an injunction, the balance of harms weighs in its
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`favor, and injunctive relief will serve the public interest by protecting Elgin’s trade secrets,
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`copyright and confidential information, and enforcing its contractual rights. In response, Dillon
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`argues that any harm to Elgin is not irreparable because Dillon has cooperated in the identification
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`and return of Elgin’s drawings and other confidential material and agreed not to use them further.
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`Dillon further claims that any business Elgin lost to Dillon is calculable and reparable. Dillon
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`disputes that Elgin has demonstrated a likelihood of success on the merits of any of its claims and
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`argues that the public interest favors robust competition, whereas Elgin’s requested relief would
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`force Dillon to go out of business. Elgin maintains that an award of monetary relief is inadequate
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`and that each of its claims have merit. To the extent Dillon claims the requested injunctive relief
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`would cause it to shut down, Elgin responds that Dillon should be required to purchase Elgin-
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`designed products from Elgin rather than use Elgin’s drawings.
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`An initial bar to relief arises from Elgin’s failure to demonstrate that Dillon’s conduct
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`irreparably harmed Elgin. “While irreparable harm is only one of the four factors courts must
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`consider in determining whether to grant injunctions, the Supreme Court has made clear that,
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`regardless of the other factors, ‘[t]he equitable remedy [of an injunction] is unavailable absent a
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`showing of irreparable injury.’” SAS Inst., Inc. v. World Programming Ltd., 874 F.3d 370, 386
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`(4th Cir. 2017) (quoting City of Los Angeles v. Lyons, 461 U.S. 95, 111 (1983)). Relevant here,
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`“[w]here the harm suffered by the moving party may be compensated by an award of money
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`damages at judgment, courts generally have refused to find that harm irreparable.” Hughes
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`Network Sys., Inc. v. InterDigital Commc’ns Corp., 17 F.3d 691, 694 (4th Cir. 1994); see Sampson
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`v. Murray, 415 U.S. 61, 90 (1974) (“The possibility that adequate compensatory or other corrective
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`relief will be available at a later date, in the ordinary course of litigation, weighs heavily against a
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`claim of irreparable harm.” (internal quotation omitted)); Di Biase v. SPX Corp., 872 F.3d 224,
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`230 (4th Cir. 2017) (“A plaintiff must overcome the presumption that a preliminary injunction will
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`not issue when the harm suffered can be remedied by money damages at the time of judgment.”);
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`Henderson v. Bluefield Hosp. Co., LLC, 208 F. Supp. 3d 763, 770 (S.D.W. Va. 2016), aff’d sub
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`nom. Henderson for Nat’l Lab. Rels. Bd. v. Bluefield Hosp. Co., LLC, 902 F.3d 432 (4th Cir. 2018)
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`(“It is also well settled that economic loss does not, in and of itself, constitute irreparable harm.”
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`(internal citation omitted)).
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`The Court finds that Elgin’s damages are generally calculable and reparable. Elgin claims
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`it has lost employees, business, and profits as a result of Dillon’s actions. (See Document 21
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`¶¶145–47.) Specifically, Elgin contends it lost eleven employees to Dillon and has had to spend
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`time and money recruiting and training replacements. (Id. ¶145.) Elgin also claims it has
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`experienced “a loss in business ranging from $150,000 to $300,000 per month.” (Id. ¶146.)
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`Such harms are the kind of economic losses that “may be compensated by an award of money
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`damages at judgment,” see Hughes, 17 F.3d at 694, and thus do not rise to the level of irreparable
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`harm.
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`Elgin further argues that, absent a preliminary injunction, it will be irreparably harmed by
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`the devaluation of its copyright and trade secrets inherent in Dillon’s allegedly ongoing
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`infringement. “As such, the ‘likelihood of irreparable harm to Plaintiff’ question is intertwined
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`with questions about the merits of the infringement action.” Wonder Works v. Cranium, Inc., 455
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`F. Supp. 2d 453, 457 (D.S.C. 2006); see also Scotts Co. v. United Indus. Corp., 315 F.3d 264, 272
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`(4th Cir. 2002) (finding the earlier Blackwelder balance-of-the-hardship question as to irreparable
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`harm “intertwined with questions about the merits” where “[b]y virtue of certain intricacies in the
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`law governing Lanham Act claims, some courts apply a presumption of irreparable harm if the
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`plaintiff has made a threshold showing as to the merits of his Lanham Act claim.”). Accordingly,
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`the Court’s further analysis of the irreparable harm question will require a brief detour into the
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`substance of Elgin’s claims where necessary.
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`As to its copyright claim, Elgin further argues it “has been, and continues to be, irreparably
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`harmed by Dillon’s and Dillon Industries’ infringing acts [as to Elgin’s 24x60 Manual] for which
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`there is no adequate remedy at law.” (Document 21 ¶175.) The Copyright Act, 17 U.S.C. §§
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`101 et seq., provides that
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`no award of statutory damages or of attorney’s fees, as provided by [the Act], shall
`be made for . . . any infringement of copyright commenced after first publication
`of the work and before the effective date of its registration, unless such registration
`is made within three months after the first publication of the work.
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`17 U.S.C. § 412 (emphasis added). The registration certificate for Elgin’s 24x60 Manual
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`indicates a first publication date of April 9, 2022. (Document 21-7.) Elgin alleges that Dillon
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`sent the 24x60 Manual from his Elgin email account to his Dillon Industries email account in April
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`2022. (Document 37 at 16.) Elgin’s copyright in the 24x60 Manual was registered on June 14,
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`2023. (Documents 21-7; 37 at 32.) Inasmuch as Elgin’s copyright was not registered within
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`three months after the first publication of the 24x60 Manual, no statutory damages or attorney’s
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`fees are available. Thus, even if Elgin could show a likelihood of success on the merits of its
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`claim, any remedy would be limited to actual damages. The evidence presented does not indicate
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`that Dillon has used, or intends to use, the 24x60 Manual in his business competing against Elgin.
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`(See Document 41-1 ¶21.) Indeed, Dillon appears willing to cure any infringement without the
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`Court’s intervention. (Id. at 21.) Accordingly, although the Court is “entitled to presume” that
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`Elgin “could show both probable likelihood of success on the merits and irreparable harm” upon
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`establishing “a prima facie claim of copyright infringement,” Serv. & Training, Inc. v. Data Gen.
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`Corp., 963 F.2d 680, 690 (4th Cir. 1992), the Court finds Elgin has not clearly demonstrated a
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`likelihood of irreparable harm. See Reg’l Serv. Ctr., Inc. v. HGD Enterprises, LLC, No. 5:06-CV-
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`498-BR, 2007 WL 9718505, at *3 (E.D.N.C. July 9, 2007) (“[T]he Supreme ‘Court has
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`consistently rejected invitations to replace traditional equitable considerations with a rule that an
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`injunction automatically follows a determination that a copyright has been infringed.’” (quoting
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`eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393 (2006))).
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`Elgin further asserts that it has suffered irreparable harm in the form of damage to its
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`goodwill and reputation as to its false designation of origin, breach of contract, and
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`misappropriation of trade secrets claims. Regarding its claims under the Lanham Act, 15 U.S.C.
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`§ 1125, Elgin argues that Dillon “used a false designation to begin immediately competing against
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`Elgin, bypassing the months it would take to create the thousands of electronic Drawings that
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`Ritchie took from Elgin.” (Document 37 at 31.) Specifically, the Defendants put Dillon
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`Industries’ name and logo on drawings taken from Elgin. Elgin claims the Defendants did so “in
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`order to confuse parts manufactures [sic] into making components for Dillon Industries, and that
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`“[h]ad Defendants not falsely designated Elgin’s Drawings as belonging to Dillon Industries, the
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`parts manufacturers would not have submitted proposals for or manufactured the components.”
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`(Id.) Relevant here, Elgin contends the establishment of consumer confusion creates a
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`presumption of irreparable injury. See Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia,
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`Inc., 43 F.3d 922, 939 (4th Cir. 1995) (recognizing that “irreparable injury regularly follows from
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`trademark infringement”). However, it is not axiomatic that such a presumption arises solely
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`from a finding of infringement. See id. (“[E]ven without the aid of any presumption, Plaintiffs
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`have produced adequate evidence of irreparable injury by demonstrating actual consumer
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`confusion, specific instances of customer complaints from the confusion, and reasonable responses
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`to these complaints.”). Elgin has not produced adequate evidence to demonstrate that Dillon’s
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`conduct has led to actual consumer confusion. Accordingly, the Court does not presume
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`irreparable injury as to Elgin’s “reverse passing off” claim.
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`As to its breach of contract claims, Elgin further argues that the stipulations provided in
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`the APC and Employment Agreements regarding irreparable harm “alone suffice to establish that
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`element for the purpose of issuing . . . injunctive relief.” (See Document 37 at 38 (internal citation
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`omitted).) The relevant provision of the APC Agreement provides:
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`8.2. Remedies. Except as expressly provided in this Agreement, any Person
`having any rights under any provision of this Agreement will be entitled to enforce
`such rights specifically (without posting a bond or other security), to recover
`damages by reason of any breach of any provision of this Agreement and to exercise
`all other rights granted by Law. Except as expressly provided in this Agreement,
`all such rights and remedies will be cumulative and non-exclusive, and may be
`exercised singularly or concurrently. The parties acknowledge that any breach of
`this Agreement may cause substantial irreparable harm to the other party.
`Therefore, this Agreement may be enforced in equity by specific performance,
`temporary restraining order and/or injunction. The rights to such equitable
`remedies will be in addition to all other rights or remedies which a party may have
`under this Agreement or under applicable Law.
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`(Document 21-1 at 33 (emphasis added).) The relevant provision of the Employment Agreement
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`similarly provides:
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`It is expressly agreed that the Company including its
`Remedies.
`(e)
`affiliates, will or would suffer irreparable injury if Employee were to violate any of
`these Confidential Information, Non-Competition and Non-Solicitation Terms and
`that the Company and/ or any of its affiliates will by reason of such violation be
`entitled to injunctive relief, without the requirement of posting of a bond, in a court
`of competent jurisdiction and Employee further consents and stipulates to the entry
`of such injunctive relief in such a court prohibiting Employee from so violating the
`terms of this agreement.
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`(Document 21-2 at 9.) Assuming, arguendo, that Delaware law applies to interpret both contracts,
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`the Court does not find irreparable harm is established by the inclusion of the above provisions
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`alone. As to the APC Agreement, the parties do not stipulate that money damages are not a
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`sufficient remedy to any breach. Indeed, they stipulate that any non-breaching party will be
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`entitled to recover damages, but that the Agreement may also be enforced in equity. See Martin
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`Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 14 of 17 PageID #: 1120
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`Marietta Materials, Inc. v. Vulcan Materials Co., 68 A.3d 1208, 1226 (Del. 2012), as corrected
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`(July 12, 2012) (finding irreparable harm established where the parties stipulated that “money
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`damages would not be [a] sufficient remedy for any breach” and that “any breach . . . shall entitle[
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`]” the non-breaching party “to equitable relief”). As to the Employment Agreement, Dillon has
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`made assurances that it has readily searched for, identified, and returned all Elgin drawings in its
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`possession and has since only used readily available OEM drawings or drawings reverse
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`engineered by Ritchie. (Document 41-2 at 2.) Such cooperation undercuts a finding of
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`irreparable harm where the injunctive relief available has previously been attained. See, e.g.,
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`Zahodnick v. Int’l Bus. Machines Corp., 135 F.3d 911, 915 (4th Cir. 1997) (on defendant’s
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`counterclaim for breach of confidentiality, district court did not err either in enjoining plaintiff
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`from disclosing defendant’s confidential materials to third parties or in ordering plaintiff to return
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`all confidential materials to defendant); Haught v. Louis Berkman LLC, 417 F. Supp. 2d 777, 788
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`(N.D. W. Va. 2006) (employer entitled to injunctive relief restraining former employee from
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`further disclosing confidential information and trade secrets and directing return of certain
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`misappropriated documents); Midwest Sign & Screen Printing Supply Co. v. Dalpe, 386 F. Supp.
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`3d 1037, 1056 (D. Minn. 2019) (no irreparable harm found in misappropriation case where, in part,
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`defendants “provided sworn assurances that mitigate[d] the risk of irreparable harm”); Am.
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`Airlines, Inc. v. Imhof, 620 F. Supp. 2d 574, 580 (S.D.N.Y. 2009) (irreparable harm not found
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`where defendant “offered to return or destroy all copies of [the] materials” at issue and defendant’s
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`new employer “made clear that it would not receive these materials”). Further, inasmuch as the
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`Employment Agreement entitles Elgin to injunctive relief for any violation thereof, the evidence
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`presented does not clearly demonstrate that Elgin is likely to succeed on the merits of its breach
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`Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 15 of 17 PageID #: 1121
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`claim. Notably, in addition to Dillon’s cooperation in identifying and returning all Elgin material
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`in its possession, the record does not clearly show at this stage that Dillon solicited any Elgin
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`employees or engaged in prohibited competitive conduct during the one-year non-competition
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`period.
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`Further, there is not sufficient evidence in the record to demonstrate that the Defendants’
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`conduct damaged Elgin’s goodwill or reputation among its customers. See All Pro Maids, Inc. v.
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`Layton, No. CIV.A. 058-N, 2004 WL 1878784, at *5 (Del. Ch. Aug. 9, 2004), aff’d, 880 A.2d
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`1047 (Del. 2005) (“[A]n employer has an interest in the goodwill created by its sales
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`representatives and other employees, which is vulnerable to misappropriation if the employer’s
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`former employees are allowed to solicit its customers shortly after changing jobs.”) (internal
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`citation omitted). Elgin argues it has lost business to Dillon, but to the extent such loss amounts
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`to lost profits, the Court reiterates its finding that such economic loss “does not, in and of itself,
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`constitute irreparable harm.” Henderson, 208 F. Supp. at 770. Nonetheless, the Court recognizes
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`that “[e]ven if a loss can be compensated by money [or other] damages . . ., extraordinary
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`circumstances may give rise to the irreparable harm required for a preliminary injunction.”
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`Hughes, 17 F.3d at 694. “But such ‘extraordinary circumstances’ are designed to be rarely
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`invocable exceptions.” Henderson, 208 F. Supp. 3d at 772. For example, our Court of Appeals
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`has explained that such circumstances may exist where “the moving party’s business cannot
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`survive absent a preliminary injunction or where damages may be unobtainable from the defendant
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`because he may become insolvent before a final judgment can be entered and collected.” Hughes,
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`17 F.3d at 694 (internal quotation marks and alterations omitted). However, the evidence
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`Case 2:23-cv-00440 Document 55 Filed 10/13/23 Page 16 of 17 PageID #: 1122
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`presented does not indicate that either of these drastic consequences is expected to befall Elgin, a
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`company engaged in “both nationwide and global” business. (Document 43 at 17.)3
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`Likewise, Elgin claims that it will sustain irreparable harm as a result of Dillon’s
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`misappropriation of Elgin’s trade secrets. Elgin contends it “need not independently show it has
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`suffered harm” because “[b]y statutory definition, trade secret misappropriation is harm.”
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`(Document 37 at 20 (quoting Oakwood Lab’ys LLC v. Thanoo, 999 F.