Kenneth Lowe Jan. 6, 2014, 11:29am

A copyright dispute that pits Chicago bankruptcy lawyer Peter Francis Geraci against a former employee and a competing law firm will continue after an appeals panel last month remanded the matter for further proceedings.

In an unpublished order issued Dec. 23, the Second District Appellate Court reversed the portion of DuPage County Circuit Judge Bonnie Wheaton's decision that granted the defendants' motion for summary judgment.

Justice Mary Seminara-Schostok delivered the court's order and Justices Michael J. Burke and Robert D. McLaren concurred.

The 46-page order stems from a suit Geraci filed in August 2010 against R. William Amidon, Legal Helpers P.C., Thomas Maley, Jeffrey Aleman, Richard Gustafson, Shobhana Kasturi and Joseph P. Doyle.

Geraci claims Amidon, a former employee, copied and shared trademarked bankruptcy law practice management software known as Geraci Automated Program (GapC) when he created similar software for the Legal Helpers firm.

The suit accuses Amidon of violating Geraci's copyright to the software, as well as his  employee contract that included a confidentiality and non-compete agreement precluding him from divulging information about GapC to outside parties.

According to the appellate court order, Geraci hired Amidon in 1996 to develop GapC,  software Geraci asserts he designed to streamline the process of generating bankruptcy-related forms and managing appointments, litigation and client information.

Geraci fired Amidon in 2006, the order states, noting that Geraci cited the alleged disclosure of the software as the reason behind his termination.

The suit alleges that in October of 2009, Geraci discovered Amidon had sold or installed GapC-like software on computers belonging to his competitors at Legal Helpers and was marketing similar software under the brand “BestClient.”

Shortly after the suit was brought, the defendants filed a motion to dismiss Geraci's claim based on a 2003 settlement agreement reached by the parties in an unrelated suit.

Geraci previously sued the Legal Helpers defendants for improperly using his "info tapes" trademark, something he is well known for and promotes in local television commercials. That suit was settled on Oct. 13, 2003 and released the defendants of claims brought by Geraci before that date.

Citing the language of that release, the trial court in 2010 granted Legal Helpers' motion to dismiss the claim. And after determining that the settlement release applied to this case, the judge granted Geraci leave to file an amended complaint in order for him to limit his claims to post-Oct. 13, 2003 conduct.

In May 2011, Geraci filed a motion for reconsideration of Wheaton's dismissal of all his pre-Oct. 13, 2003 claims. Although she acknowledged she had misapplied the law, the judge concluded that Geraci's reconsideration request was untimely as it was brought seven months later.

The Legal Helpers defendants then filed a motion for summary judgment, arguing that the software at the crux of Geraci's suit was not a trade secret. Amidon filed a separate motion, alleging that he had independently developed BestClient after he was fired and didn’t share Geraci’s software.

Wheaton in August 2011 determined that GapC was not a trade secret and granted the motion for summary judgment in favor of the defendants on the issue of trade secret misappropriation.

On appeal, Geraci argued that the trial court erred in granting summary judgment to the defendants, denying his motion to amend his complaint to preserve his pre-Oct. 13, 2003 claims, granting the defendants' partial motion to dismiss in 2010 and ordering him to identify his trade secrets, among others.

The appeals panel agreed with Geraci that Wheaton did err in granting the defendants' partial motion to dismiss based on the October 2003 settlement and as such, reversed that portion of the lower court ruling.

"As noted above, the trial court abused its discretion in failing to allow the plaintiff to amend his complaint to preserve his pre-October 13, 2003 claims," Seminara-Schostok wrote for the panel. "The amendment should have been allowed and, therefore, the issue
is not waived."

She explained that the because Geraci's "present trade secret allegations were not within the contemplation of the parties in 2003," the release in the 2003 settlement "whether specific of general, did not bar these claims."

The appeals panel further held that Wheaton erred in denying Geraci’s motion to reconsider because although she acknowledged she erred in granting in, denied it based on of his seven month delay in bringing the motion.

"While the motion could have been brought sooner, the trial court abused its discretion when it realized it made a mistake and refused to correct it," Seminara-Schostok wrote, adding that "on remand, "the trial court shall allow the plaintiff to amend his complaint to include the improperly dismissed claims."

The panel also reversed Wheaton's decision to grant the defendants' request for summary judgment.

"[B]because there are questions of fact as to whether GapC was a trade secret and whether it was misappropriated under the Act, we reverse the grant of summary judgment in favor of the Legal Helpers defendants," the justices held.

In regards to some of the other issues raised on appeal, the panel determined that Wheaton did not err in denying Geraci's request for the appointment of a special master, and requiring him to identify his trade secrets.

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