Americana Worldwide Corporation v. Protrade Logistics Corporation

CourtDistrict Court, N.D. Illinois
DecidedJuly 3, 2025
Docket1:22-cv-03095
StatusUnknown

This text of Americana Worldwide Corporation v. Protrade Logistics Corporation (Americana Worldwide Corporation v. Protrade Logistics Corporation) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Americana Worldwide Corporation v. Protrade Logistics Corporation, (N.D. Ill. 2025).

Opinion

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

AMERICANA WORLDWIDE CORPORATION, Plaintiff No. 22 CV 3095

v. Judge Jeremy C. Daniel

PROTRADE LOGISTICS CORPORATION and JOSE J. BENITEZ, Defendants

MEMORANDUM OPINION AND ORDER This matter comes before the Court on a pair of motions for summary judgment. The defendants move for summary judgment on the plaintiff’s breach of contract, state and federal trade secret, and tortious interference claims. (R. 90.) The counter-defendants move for summary judgment on counter-plaintiff Jose Benitez’s breach of contract and Illinois Wage Payment and Collection Act claims. (R. 93.) For the reasons given in this order, the Court grants-in-part and denies-in-part both motions. BACKGROUND The plaintiff, also counter-defendant, American Worldwide Corporation (“AWW”), is a specialized freight broker for trade show exhibitions and displays. (R. 138 (Defendants’ Response to Plaintiff’s Statement of Additional Facts (“Defs.’ Resp. PSOAF”)) ¶ 1.)1 The parties agree that this is a “niche market” with a limited clientele. (Id. ¶¶ 2–4.) AWW is owned and was founded by counter-defendant Mark Kengott. (R. 110 (Counterclaim-Plaintiff’s Response to Counterclaim-Defendant’s

Statement of Material Facts (“Countercl. Pl.’s Resp. CDSOF”)) ¶ 2.) The defendant and counter-plaintiff, Jose Benitez, worked for AWW from January 2015 until May 14, 2021. (Id. ¶ 4.) When he left AWW, he started defendant company Protrade Logistics Corporation (“Protrade”). (R. 114 (Plaintiff’s Response to Defendant’s Statement of Material Facts (“Pl.’s Resp. DSOF”)) ¶ 3.) Beyond these basic facts, the parties vigorously dispute the course of events. According to AWW, it has developed an extensive list of trade secrets

concerning its “specialized know-how” in delivering exhibits to convention centers and other trade show sites. (R. 115 (Plaintiff’s Statement of Additional Facts (“Pl. SOAF”)) ¶¶ 5–6.) This information is kept on its information technology system, which uses “industry standard” firewalls and password protection to limit access to authorized users. (Id. ¶ 7.) Among these authorized users was Benitez, who rose through the ranks at AWW to become Director of Operations. (Id. ¶ 8–12.) On

February 14, 2019, Benitez signed an “Employee Non-Compete, Confidentiality and Non-Solicitation Agreement” (the “Agreement”). (Id. ¶ 15; R. 1 ¶ 38.)

1 For ECF filings, the Court cites to the page number(s) set forth in the document’s ECF header unless citing to a particular paragraph or other page designation is more appropriate. For documents filed under seal, the Court cites the sealed version of the documents while attempting not to reveal any information that could be reasonably deemed confidential. Confidential information is discussed to the extent necessary to explain the path of the Court’s reasoning. See In re Specht, 622 F.3d 697, 701 (7th Cir. 2010); Union Oil Co. of Cal. v. Leavell, 220 F.3d 562, 568 (7th Cir. 2000). The COVID-19 pandemic “caused the tradeshow business to essentially shut down.” (Pl. SOAF ¶ 13.) Kengott assigned Benitez to work with an outside vendor to create proprietary software for “tradeshow shipping.” (Id.) Around the same time,

approximately March 18, 2020, AWW’s information technology professional, Peter Rutecki, allegedly discovered that Benitez had created a private email account “made to appear as if it were an AWW email.” (Id. ¶ 21.) AWW alleges that Benitez was using this email account to conduct business for AWW, and was also “saving and storing numerous AWW confidential documents, including lists of clients and other technical information relating to those clients, on his personal Google drive.” (Id. ¶¶ 23–25.) According to AWW, Benitez could provide no satisfactory explanation for

these actions. (Id. ¶¶ 22, 26.) After Benitez left AWW to start Protrade, Rutecki re- examined Benitez’s computer and found that Benitez had deleted his AWW email account and all his emails, and was unable to recover the deleted information. (Id. ¶¶ 33–35.) According to AWW, after Benitez left its employ, he kept access to and/or ownership over documents containing AWW trade secrets, and used those trade secrets to attempt to “poach” AWW customers. (Id. ¶¶ 42–62.) AWW accuses Benitez

of not informing long-term customers that he had left AWW, leading them to hire Protrade when they thought they were hiring AWW. (Id. ¶ 49.) Some of these customers invoiced AWW for work performed by Protrade. (Id.) Benitez tells a very different story. According to him, there were no internal controls over who could access AWW documents, and the alleged trade secrets were nothing more than “information [] generally known in the freight business and easily determined by individuals in the industry.” (R. 138-1 ¶¶ 3–4.) Furthermore, according to Benitez, he transferred certain AWW documents to Google cloud files as early as 2015 for easier collaboration across AWW’s operations team. (Id. ¶¶ 4–6.) AWW

employees with access to these Google cloud files included “other members of the Operations team, salesmen, and Mark Kengott.” (Id. ¶ 6) Benitez asserts that in March 2020, Rutecki changed ownership of these documents from Benitez to Kengott, but Benitez retained access permission until after he left AWW. (Id. ¶¶ 7, 13.) Benitez generally denies misappropriating AWW confidential information or trade secrets, poaching customers, or misleading Protrade customers into thinking they were hiring AWW. (See generally Defs.’ Resp. PSOAF.)

Benitez also alleges further facts in support of his counterclaims. He alleges that AWW and Kengott agreed to pay him an $80,000 annual salary for 2019, plus a $14,000 bonus for his work during 2019. (R. 1102 (Counterclaim-Plaintiff’s Statement of Additional Material Facts (Countercl. Pl.’s SOAF ¶ 7)). He alleges this bonus was never paid, and that in March 2020, AWW and Kengott reduced his salary without warning. (Id. ¶ 9–10.) AWW and Kengott, for their part, assert that they did discuss

a pandemic related salary cut with Benitez, and further assert that the bonus payment was discretionary, not obligatory. (R. 133 (Counterclaim-Defendant’s Response to Counter-Plaintiff’s Statement of Additional Facts (“Countercl. Defs.’ Resp. C. Pl’s SOAF”) ¶¶ 7–10.)

2 R. 110 contains two separate documents: Benitez’s Response to AWW’s Statement of Material Facts (“Countercl. Pl.’s Resp. CDSOF”), and Benitez’s Statement of Additional Material Facts (“Countercl. Pl.’s SOAF”). AWW sued Benitez and Protrade, alleging that when Benitez left AWW, he took AWW confidential information and trade secrets, and has used that information to improperly solicit AWW clients and interfere with AWW’s ongoing business

relations. (See generally R. 1.) AWW alleges this violated the Agreement. (Id. ¶ 17.) AWW brings four counts: breach of contract (Count I), violation of the Federal Defend Trade Secrets Act (“DTSA”) 18 U.S.C. § 1836, et seq. (Count II), violation of the Illinois Trade Secrets Act (“ITSA”) 765 Ill. 1065/1, et seq. (Count III), and Tortious Interference with Business Relations (Count IV). (Id. ¶¶ 37–76.) Benitez counter-sues, alleging that AWW and Kengott failed to pay him his full salary after March 2020, failed to pay him his owed bonus for 2019, and failed to

pay out his unused vacation time when he left AWW. (See generally R. 20.) Benitez argues these failures violate the implicit employment contract he had with AWW (Count I), as well as the Illinois Wage Payment and Collection Act, (“IWCPA”)

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Americana Worldwide Corporation v. Protrade Logistics Corporation, Counsel Stack Legal Research, https://law.counselstack.com/opinion/americana-worldwide-corporation-v-protrade-logistics-corporation-ilnd-2025.