Telecom America, Inc. v. Oncor Communications, Inc.

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
TELECOM AMERICA, INCORPORATED, 
Plaintiff-Appellant,
v.
ONCOR COMMUNICATIONS,
INCORPORATED, a Delaware
Corporation,
Defendant-Appellee,  No. 01-1765
and
NATIONAL OPERATOR SERVICES,
INCORPORATED, a Maryland
Corporation,
Defendant.

Appeal from the United States District Court
for the District of Maryland, at Greenbelt.
Alexander Williams, Jr., District Judge.
(CA-98-679-AW)
Argued: February 28, 2002
Decided: March 19, 2002
Before WIDENER and MOTZ, Circuit Judges, and
HAMILTON, Senior Circuit Judge.
Affirmed by unpublished per curiam opinion.
COUNSEL
ARGUED: Alan C. Thomas, FISCHER, PORTER, CALIGUIRE &
THOMAS, P.C., Englewood Cliffs, New Jersey, for Appellant. Jef-
2 TELECOM AMERICA v. ONCOR COMMUNICATIONS
frey Martin Schwaber, STEIN, SPERLING, BENNETT, DE JONG,
DRISCOLL & GREENFEIG, P.C., Rockville, Maryland, for Appel-
lee. ON BRIEF: Arthur L. Porter, Jr., Jay D. Fischer, Scott H. Gold-
stein, FISCHER, PORTER, CALIGUIRE & THOMAS, P.C.,
Englewood Cliffs, New Jersey, for Appellant. Alexia Kent Bourgerie,
STEIN, SPERLING, BENNETT, DE JONG, DRISCOLL & GREEN-
FEIG, P.C., Rockville, Maryland, for Appellee.
Unpublished opinions are not binding precedent in this circuit. See
Local Rule 36(c).
OPINION
PER CURIAM:
In this diversity action, Telecom America, Incorporated, sues
Oncor Communications, Incorporated, for breach of contract, unjust
enrichment, and various related torts. The district court granted Oncor
summary judgment on Telecom’s breach of contract claim, and, after
Telecom presented its evidence, judgment as a matter of law on Tele-
com’s remaining claims. Telecom appeals; we affirm.
I.
Oncor provides long-distance telephone service. To build its cus-
tomer base, Oncor entered into a contract with National Operator Ser-
vices, Incorporated (NOS), under which NOS agreed to solicit owners
of public telephone sites onto the Oncor network. NOS, in turn,
entered into a contract with Telecom, under which Telecom directly
solicited sites for NOS. Periodically, Oncor would determine the call
activity of each site assigned to the network by NOS, and pay NOS
a commission. NOS then remitted a percentage to Telecom for sites
Telecom had referred; Telecom, finally, would pay a percentage back
to site owners for the right to continue serving as their agent (i.e., for
authorization to switch their sites from one long distance service to
another).
TELECOM AMERICA v. ONCOR COMMUNICATIONS 3
In the Spring of 1995, a dispute arose between Oncor and NOS,
and on June 30, Oncor stopped making commission payments to
NOS. NOS sued Oncor in state court, and at the same time suspended
payments to its site solicitors, including Telecom. Consequently,
Telecom attempted to obtain payment from Oncor.
Telecom and Oncor engaged in a series of conversations, at the end
of which Oncor wrote Telecom a letter dated July 13, 1995. The letter
briefly described the relationship between NOS and Telecom, and
then stated, in pertinent part:
NOS has informed Telecom America that it will not pay all
or any portion of the commissions and surcharges due to
Telecom America on July 15, 1995 (the "July Payment").
Based upon such statement by NOS you [Telecom] have
contacted Oncor to determine if Oncor would be willing to
pay Telecom America the July Payment owed to Telecom
America by NOS.
Based upon the representation and agreements made by
Telecom America and contained in this letter, Oncor will
agree to pay to Telecom America the July Payment. You
will provide Oncor with such documents as may be reason-
ably requested by Oncor, including a list of all public pay
phone Sites brought to Oncor through the efforts of Telecom
America, so that the parties can calculate and Oncor can
verify the amount properly due to Telecom America. Once
Oncor and Telecom America agree upon the amount due to
Telecom America by NOS, Oncor shall pay such amount.
Telecom America covenants and agrees to pay the Sites all
sums do [sic] and owing to such parties.
Oncor will continue to make such payments to Telecom
America each month for so long as (i) NOS fails to pay all
sums properly due to Telecom America pursuant to the
Agreement [between NOS and Telecom], and (ii) no legal
or regulatory action is taken which would prohibit or limit
Oncor’s ability or right to make such payments. Telecom
America covenants and agrees that for so long as Oncor
makes payments on behalf of NOS, that Telecom America
4 TELECOM AMERICA v. ONCOR COMMUNICATIONS
shall not move any of its Sites off of the Oncor network and
further agrees that it will not solicit any public pay phone
customers on the Oncor network and attempt to move them
to another operator service provider.
Telecom America acknowledges and agrees that the pay-
ments made by Oncor are an accommodation to Telecom
America and Oncor is not in any way assuming ongoing lia-
bility or obligations under Telecom America’s Agreement
with NOS. . . .
If you agree with the terms and conditions set forth in this
letter, please acknowledge your acceptance by signing this
letter in the space provided below and returning an original
to me for Oncor’s files.
Although no representative of Telecom ever signed the July 13 let-
ter, on July 17 Telecom sent Oncor a database of its 8,000 active and
inactive sites, including contact names, phone numbers and addresses
of the site owners as well as the contract terms, and commission
arrangements between Telecom and the site owners. On July 21,
1995, however, NOS obtained an order from the state court, effective
July 17, compelling Oncor to pay into an escrow account all money
"due and payable to [NOS’] sites and subagents" and prohibiting
Oncor from having any "direct contact with" the site owners or sub-
agents. Five days later, in a letter dated July 26, Oncor informed Tele-
com that "[b]ased upon the Court’s [July 17] order, Oncor must
retract any offers made by Oncor in its July 13, 1995 letter." Telecom
nevertheless kept its sites on the Oncor network for some unspecified
length of time and, to date, Oncor has never paid any commissions
or surcharges to Telecom for these customers.
On August 21, 1995, NOS and Oncor settled the suit NOS had
brought against Oncor in state court. According to the terms of that
settlement, Oncor (1) forgave NOS $1,908,906 of prepaid commis-
sion debt and (2) paid NOS $436,000. On the next day, NOS sent
Telecom a proposed release requiring NOS to pay Telecom $65,074
(an amount equal to the commissions owed to Telecom for the month
of May 1995) in exchange for Telecom’s acknowledgment that it had
been paid all past commissions and that "all claims, past, present and
TELECOM AMERICA v. ONCOR COMMUNICATIONS 5
future, are hereby waived." Telecom and NOS executed this agree-
ment without material change, and NOS made the agreed-upon pay-
ment to Telecom.
According to Telecom, Oncor then "began directly soliciting Tele-
com’s customers," using both the data it had "tricked Telecom into
providing," and also an "authorization" it had received from NOS
allowing it "to circumvent NOS and its subagents, i.e., Telecom, and
deal directly with the site owners that they provided."
On April 20, 1998, Telecom filed this action against both NOS and
Telecom, alleging that it was entitled to payment from both compa-
nies under several theories. In May 1999 the district court granted
Oncor summary judgment on Telecom’s claim that Oncor breached
a contract it had entered into with Telecom. On May 3, 2000, Tele-
com settled with NOS. A bench trial on Telecom’s other claims
against Oncor began on May 7, and at the close of Telecom’s case
Oncor moved for judgment as a matter of law pursuant to Rule 52(c).
The court granted the motion and Telecom appeals.
We review the district court’s grant of summary judgment on the
breach of contract claim de novo. As to the other claims, on which
the district court granted judgment as a matter of law pursuant to Rule
52(c), we review the court’s findings of fact for clear error and its
conclusions of law de novo. See Carter v. Ball, 33 F.3d 450, 457 (4th
Cir. 1994). The parties agree that Maryland law governs their dispute.
II.
Telecom contends that Oncor’s July 13, 1995 letter constituted a
contract between the parties, which it fully performed and Oncor
breached. Specifically, Telecom maintains that the letter "contained
unilateral promises by Oncor that invited Telecom’s acceptance by
performance," and that Telecom performed (i.e., sent its database disk
to Oncor) according to the terms spelled out in the letter. Brief of
Appellant at 27. However, in the July 13 letter Oncor specifically
notified Telecom: "[i]f you agree with the terms and conditions set
forth in this letter, please acknowledge your acceptance by signing
this letter in the space provided below and returning an original to me
for Oncor’s files." (Emphasis added). The letter also contained a
6 TELECOM AMERICA v. ONCOR COMMUNICATIONS
space for Telecom to sign under the words "ACCEPTED AND
AGREED TO BY." Telecom never signed or returned the letter, and
so the district court held that, as a matter of law, no contract was
formed.
Telecom contends that this holding was error. The company relies
on Porter v. General Boiler Casing Co., Inc., 396 A.2d 1090 (Md.
1977), for the proposition that "in certain circumstances signatures are
not required to bring a contract into being." Brief of Appellant at 27.
Of course this is true, but those "circumstances" are limited. As the
Court of Appeals of Maryland explained in Porter, "there need be no
signatures unless the parties have made them necessary at the time
they expressed their assent and as a condition modifying that assent."
396 A.2d at 1095 (emphasis added). Given the plain language of the
July 13 letter, it does not appear that the district court erred in con-
cluding that in this case signatures were necessary.
But even assuming that the July 13 letter did constitute a contract
between the parties, Oncor’s obligations under the contract were
either conditional or fully performed. The July 13 letter stated that
Oncor was not obligated to make payments if any "legal or regulatory
action is taken which would prohibit or limit Oncor’s ability or right
to make such payments." Shortly thereafter, the state court issued an
injunction barring such payments. The letter also made clear that
Oncor’s payments were entirely derivative of NOS’s liability; that is,
Oncor agreed to pay only so long as "NOS fails to pay all sums prop-
erly due to Telecom America pursuant to the Agreement [between
NOS and Telecom]." When Telecom accepted a settlement from NOS
on August 23, it waived all of its past and future claims arising from
its contract with NOS. Therefore, Oncor’s derivative liability also
came to an end.
For all of these reasons, the district court did not err in granting
Oncor summary judgment on Telecom’s breach of contract claims.
III.
Alternatively, Telecom maintains that Oncor was unjustly enriched
when it received and used Telecom’s confidential information, and
TELECOM AMERICA v. ONCOR COMMUNICATIONS 7
retained Telecom’s sites on the Oncor network, without compensating
Telecom.
Under Maryland law a plaintiff must prove three elements to make
out an unjust enrichment claim:
1. A benefit conferred upon the defendant by the plaintiff;
2. An appreciation or knowledge by the defendant of the
benefit; and
3. The acceptance or retention by the defendant of the bene-
fit under such circumstances as to make it inequitable for the
defendant to retain the benefit without the payment of its
value.
Mass Transit Admin. v. Granite Const. Co., 471 A.2d 1121, 1125
(Md. Ct. Spec. App. 1984) (quoting Everhart v. Miles, 422 A.2d 28(Md. Ct. Spec. App. 1980)).
The district court held that Telecom had failed to prove the third
element — that Oncor retained a benefit without payment in circum-
stances in which it was inequitable to do so. Specifically, after careful
consideration of Telecom’s evidence, the court found that Telecom
had not proved unjust enrichment because it had "voluntarily" made
its decisions, "knowing the risk involved." The court reasoned that
Telecom "had an opportunity to take back the phones, to switch the
phones, but for a business decision decided it wasn’t practical."
Rather, Telecom "received a business benefit by leaving the phones
there, because [the company] felt ultimately [it] would get a deal out
of it and would get paid [its] commissions." In sum, the court con-
cluded, "[a] restitution claim is not available under . . . circumstances
where a plaintiff voluntarily made the decision knowing the risk
involved in getting commissions or not getting commissions."
Ample evidence supports these findings and the district court did
not err in concluding that, given these facts, Telecom had not demon-
strated that it would be inequitable to permit Oncor to retain, without
payment, any benefit it received from the Telecom’s sites and
assertedly confidential information.
8 TELECOM AMERICA v. ONCOR COMMUNICATIONS
IV.
Telecom also maintains that Oncor misappropriated Telecom’s
trade secrets when it retained Telecom’s customer data base. The
Maryland Uniform Trade Secrets Act defines a "trade secret" as infor-
mation that (i) derives "independent economic value" from "not being
generally known" or "readily ascertainable" by others who can obtain
economic value from its use or disclosure; and (ii) is the subject of
"efforts that are reasonable under the circumstances" to maintain the
secrecy of the information." See Md. Code Ann. Com. Law II § 11-
1201(e) (Michie 2000).
In this case, as the district court found, Telecom did not make rea-
sonable efforts to keep its database secret. Telecom produced no evi-
dence of any agreement, procedure or other measure instituted to
guard against unauthorized disclosure of this information. And, the
Telecom employee entrusted to compile and disseminate the informa-
tion to Oncor received no instructions concerning its alleged confi-
dential nature. Cf. Motor City Bagels, L.L.C. v. The American Bagel
Co., 50 F. Supp. 2d 460, 480 (D. Md. 1999) (company did not meet
secrecy requirement when it failed to exact secrecy agreements from
potential investors and the exclusivity language was ineffective).
Nor, again as the district court found, did Telecom prove that there
was a "misappropriation," that is, "acquir[ing] the trade secret by
improper means or disclos[ing] the trade secret without express or
implied consent." Diamond v. T. Rowe Price Assocs., Inc., 852 F.
Supp. 372, 412 (D. Md. 1994). Under the Uniform Trade Secret Act,
"improper means" include "theft, bribery, misrepresentation, breach
or inducement of a breach of a duty to maintain secrecy, or espionage
through electronic or other means." § 11-1201(b). In determining that
Oncor did not obtain the lists by "misappropriation," the district court
expressly found that Oncor had perpetrated "no fraud in asking for
this information," and indeed, had made "no false representation of
material fact." Rather, Telecom sent the information "hoping that [it]
would ultimately reach an agreement or under the impression that [it]
had a deal." Again, abundant evidence supports these findings. Thus,
there was no misappropriation and Telecom’s trade secret claim fails
on two grounds.
TELECOM AMERICA v. ONCOR COMMUNICATIONS 9
V.
Telecom further maintains that Oncor intentionally interfered with
contracts between Telecom and its site owners.
Under Maryland law, competition is "just cause for damaging
another in his [or her] business," and "a competitor who intentionally
causes a third person not to continue an existing contract terminable
at will does not improperly interfere with the contractual relation if
no wrongful means are employed." Macklin v. Robert Logan Assocs.,
639 A.2d 112, 119, 121 (Md. 1994) (quoting Natural Design Inc. v.
Rouse Co., 485 A.2d 663, 676 (Md. 1984)). In the instant case, Tele-
com concedes that its contracts with site owners were terminable at
will, and that Oncor’s aim was to "market ANIs" directly, without
recourse to agents or subagents. In other words, Oncor intended to
compete directly with Telecom for site owners’ business.
Telecom asserts that Oncor is nevertheless liable because it used
wrongful means: that Oncor "tricked" Telecom to turn over customer
lists, obtained the right (from NOS) to deal directly with site owners,
and then used Telecom’s "trade secrets" (i.e., customer lists) to con-
tact site owners. But, as already noted, supra, the district court made
factual findings, fully supported by record evidence, that Oncor did
not "trick" Telecom and that Telecom’s customer lists were not trade
secrets. The district court also found that Telecom did not produce
any other evidence "of any malicious, deliberate, intentional, willful
interference." Accordingly, the district court did not err in granting
judgment on the intentional interference claim.
VI.
Finally, Telecom contends that Oncor fraudulently induced it to
provide confidential contact information about its sites and to keep its
sites on the Oncor network. The district court generally found that
Oncor did not knowingly make any false representation of material
fact. With respect to the specific allegation of fraud — the testimony
from Telecom’s principal that, in sum, "they didn’t perform, they
rescinded, they canceled the deal" — the court found that this fell
well short of fraud under Maryland law. Moreover, the court
expressly found that the reason Oncor did not move forward with the
10 TELECOM AMERICA v. ONCOR COMMUNICATIONS
deal "was . . . a court order." "And on top of that, on the 26th of July
of 1995 there was a clear retraction letter," barring any reliance by
Telecom "on any so-called misrepresentation." As explained within,
the evidence at trial well supported these findings; accordingly, the
court did not err.*
VII.
For the foregoing reasons, the judgment of the district court is in
all respects
AFFIRMED.
*Given our conclusion that all of Telecom’s liability claims fail, we
need not address its contentions that the district court erred in finding its
damages claims too speculative, in refusing to grant an accounting, and
not permitting additional time to designate an expert on damages.