Preface 6 results (showing 5 best matches)
- In this book, you will learn the details of trade secret law both under common law and the Uniform Trade Secrets Act. Topics covered include: (1) the scope of trade secret protection; (2) the requirements for establishing trade secret rights (3) the legal and policy limitations of trade secret protection; (4) the essential elements of a claim for trade secret misappropriation; (5) major defenses; and (6) available remedies.
- Because there are many practical aspects to trade secret protection, the book is one-part legal, and one-part practical. In addition to explaining the black-letter law governing trade secrets, it provides practical advice on how to protect trade secrets and an overview of many of the subtle issues that can arise in trade secret misappropriation cases. It is designed to provide useful information to attorneys, law students, and business professionals alike. It can also serve as a companion to our casebook,
- Because a wide array of information can be protected if it meets the requirements of trade secret law, it is important for businesses and their attorneys to understand how to identify and protect valuable trade secrets. Conversely, due to the high costs of trade secret litigation, it is also imperative for businesses to understand the limits of trade secret protection. For important public policy reasons, not every bit of information that a business creates or holds is deserving of trade secret protection.
- Statistics about the amount and value of intellectual property owned by U.S. and foreign companies tend to be overstated and unverifiable. However, there is no escaping the fact that every company probably owns one or more trade secrets, even if they do not know it. In fact, although patent, copyright, and trademark law get most of the attention when intellectual property rights are discussed, arguably it is trade secret law that does most of the work protecting the valuable intangible assets of companies, particularly small and mid-sized businesses. This is because the type of information that can be protected by trade secret law is very broad and companies are inclined to keep at least a portion of their operations private.
- As of the date of publication of this book, nearly all states (47) have adopted the Uniform Trade Secrets Act (the UTSA) and North Carolina has enacted a statute that is similar to the UTSA. Accordingly, this book focuses on trade secret doctrine as defined by the UTSA. However, given the size and influence of the two states that have yet to adopt the UTSA (Massachusetts and New York), applicable provisions of the Restatement (First) of Torts and the Restatement (Third) of Unfair Competition are discussed where appropriate. Of course, the laws of each individual state should be researched as necessary to determine whether and to what extent they deviate from the basic principles that are detailed herein. Generally, those differences often relate to the definition of a trade secret and the scope of available remedies for trade secret misappropriation.
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Chapter 2. Trade Secret Subject Matter 99 results (showing 5 best matches)
- The modern view of trade secret law under the UTSA defines a trade secret very broadly. Almost anything of competitive value to a company can be a trade secret as long as it meets the three requirements of trade secret protection: secrecy, independent economic value, and reasonable efforts to maintain secrecy. These requirements are embedded in the definition of a trade secret under the UTSA, which defines a trade secret as:
- An example of a possible preemption problem concerns the potential overlap of alleged trade secrets and copyrighted materials. While patent and trade secret law protect inventions and information, federal copyright law covers only expression. Nevertheless, copyright preemption questions can arise in trade secret cases where, for instance, the copyrighted material was not published or otherwise made publicly available. If you write a novel and engage in reasonable efforts to keep it secret, it is arguably protected by both copyright and trade secret law until it is published.
- Whether trade secret information is properly or improperly acquired by others, there is always a risk that it will lose its trade secret status. This is because once a trade secret is disclosed and becomes generally known or readily ascertainable, it cannot meet the secrecy requirement of trade secret law. The trade secret owner’s only recourse in this situation is to sue the alleged misappropriator for an award of damages or a limited “lead-time” injunction. As the foregoing reveals, however, individuals and companies that properly acquire trade secrets cannot be misappropriators unless they improperly use or disclose those secrets.
- The fourth and fifth means of proper acquisition focus on the definition of misappropriation under the UTSA. The comments to the UTSA identify them as discovery by “[o]bservation of the item in public use or on public display” and “[o]btaining the trade secret from published literature.” Unif. Trade Secrets Act § 1 cmt. (amended 1985). As is discussed more fully in § 4.4.1 , where a party learns a trade secret through a disclosure that was not made in breach of a contract or special relationship, or with knowledge of such a breach, she is entitled to use it. In other words, any discovery of a trade secret that does not meet the definition of misappropriation under trade secret law is a proper disclosure. Such discovery could occur, for instance, where a trade secret owner voluntarily discloses information without first establishing a duty of confidentiality. It may also occur where trade secrets are disclosed by accident or mistake.
- Second, trade secret litigation is expensive and the more information that is claimed as a trade secret, the greater the costs. According to surveys by the American Intellectual Property Law Association (AIPLA), it can cost anywhere from $400,000 to well over one-million dollars to pursue a trade secret misappropriation case through trial. Because much of the discovery and presentation of evidence in trade secret misappropriation cases involves the identification of trade secrets and proof of trade secrecy, each claimed trade secret adds numerous points of potential dispute.
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Chapter 5. Defenses to Trade Secret Misappropriation 57 results (showing 5 best matches)
- Because the general rule is that a state trade secret claim, as with any state claim, will be preempted by federal copyright law where the rights granted under the state law are equivalent to those granted under the federal copyright law ( § 2.9.2), care must be taken to consider the nature and scope of trade secret claims and to determine if, in fact, they are copyright cases in disguise. In practice this means that if the trade secret claim is based merely on the alleged copying of information (a wrongful “use” offense under trade secret law), the trade secret claim is likely to be preempted.
- Ultimately, in practical terms the goal of trade secret law is to strike the proper balance between restricting disclosures to protect legitimate trade secrets while permitting disclosures that are more readily recognized as being in the public interest. For instance, one may be privileged to disclose trade secret information “that is relevant to public health or safety, or to the commission of a crime or tort, or to other matters of substantial public concern.” Restatement (Third) of Unfair Competition § 40 cmt. c (1995). Some whistleblowing statutes also privilege disclosures of information that potentially include trade secrets. ., 5 U.S.C. § 2302(b)(8) (2006). However, free speech concerns do not automatically outweigh the other significant interests recognized by trade secret law. Elizabeth A. Rowe,
- Proof of the existence of a trade secret is part of plaintiff’s in a trade secret misappropriation case can prevail by pleading and proving that information that was once a trade secret has lost its status as a trade secret. The loss of trade secrecy can happen in two basic ways. First, the information may have been acquired (properly or improperly) by a third-party and subsequently disclosed in such a way that it has become generally known or readily ascertainable. , 897 F. Supp. 260 (E.D. Va. 1995) (finding a public disclosure of the alleged trade secrets despite the plaintiff’s extraordinary efforts to keep them secret). Second, information that was once a trade secret may be inadvertently or voluntarily disclosed by the plaintiff. ., 16 F. Supp. 2d 992, 1004–05 (finding the voluntary and unrestricted disclosure of information to defendant to be fatal to plaintiff’s trade secret claims despite other efforts to maintain secrecy).
- If an issue is part of plaintiff’s , by definition the negative assertion of that issue is not an affirmative defense. According to
- The first line of defense for any defendant in a trade secret misappropriation case is to attack plaintiff’s . To do so requires both an understanding of the essential elements of a claim for trade secret misappropriation and who has the burdens of production and persuasion on those issues. In practice, this can only be determined by researching the law of a given jurisdiction, but as noted previously, generally, the plaintiff has the burden of pleading and proving: (1) that it owns (or is the exclusive licensee of) a trade secret; (2) that the trade secret was misappropriated by the defendant; and (3) that it is entitled to one or more remedies.
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Introduction 8 results (showing 5 best matches)
- Like other areas of law, trade secret law has evolved over a long period of time and while it is important to understand the current state of the law, it is also important to know its historic origins and the theories and policies that underlie trade secret doctrine. An understanding of the evolution of trade secret law is particularly important because there is a tendency in trade secret cases for attorneys and judges to cling to “old” principles of law which, arguably, were modified and refined by the enactment of the Uniform Trade Secrets Act (the UTSA).
- Although for rhetorical or philosophical reasons a litigant may choose to emphasize either the property or unfair competition views of trade secret law, in reality trade secret doctrine includes aspects of both. This is because there are two essential requirements of a trade secret misappropriation claim. First, the information to be protected must be a trade secret (a form of intangible property). Second, the trade secrets must have been misappropriated (a form of unfair competition).
- As is noted throughout this book, whether one views trade secrets as a form of property or not can affect how trade secret law is applied. Generally, those who desire more absolute protection for information tend to favor the property view, while those who see the potential anti-competitive effects of strong trade secret rights tend to favor the unfair competition view. There is an emotional appeal to both points of view. Thus, as a practical matter, the plaintiffs in a trade secret misappropriation case will not hesitate to assert either or both arguments if it will help their case.
- With the foregoing in mind, this book begins in Chapter 1 with an examination of the theories, origin, and evolution of trade secret law. An important insight that emerges from this examination is that there is an ongoing debate among scholars whether trade secret doctrine is anchored in property theory or principles of unfair competition law. This debate has naturally led to questions about which approach better protects the interests of society and trade secret owners.
- The book concludes in Chapters 8, 9, and 10 with an examination of three important trade secret issues: (1) the protection of trade secrets in dealings with the government; (2) the protection of trade secrets outside of the United States; and (3) potential criminal liability for trade secret misappropriation and related crimes.
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Chapter 3. The Requirements for Trade Secret Protection 53 results (showing 5 best matches)
- There are a variety of steps that a putative trade secret owner can take to protect its information, all of which are based more upon common sense than the dictates of law. As a practical matter, because trade secret litigation can be expensive, there is no guaranty of success, and trade secrets can be lost in the process, a trade secret owner should institute measures that are necessary to achieve strong security. This is particularly true with respect to the “crown jewels” of a company. In order to meet the reasonable efforts requirement of trade secret law, however, something less than strong security is often enough.
- In summary, the modern view of trade secret law under the UTSA (and the EEA) makes the reasonable efforts requirement a separate requirement for secrecy, whereas the alternative common law view in the treats it as evidence of secrecy and other trade secret issues. As a practical matter (at least for the defendant in a trade secret case), it makes sense to treat the reasonable efforts requirement as a separate requirement because it encourages courts and litigants to filter out those putative trade secrets whose value is only recognized by the plaintiff after the alleged misappropriation occurs. In addition, the requirement helps clarify that each of the requirements of trade secrecy are important.
- The states that have not adopted the UTSA often rely on the older version of trade secret law as expressed in the . However, in contrast to the UTSA which codified the reasonable efforts requirement, the includes “the extent of measures taken by [the trade secret owner] to guard the secrecy of the information” as one of six factors to be considered in determining whether information qualifies as a trade secret. Restatement (First) of Torts § 757 cmt. b (1939). Because of this, reasonable efforts is not viewed as an independent requirement of trade secrecy and can therefore be overlooked or downplayed in non-UTSA jurisdictions, particularly in cases where there is evidence of egregious wrongdoing.
- As a practical matter, once the plaintiff in a trade secret case puts on some evidence that its alleged secrets are generally known or readily ascertainable, it is up to the defendant to find and present evidence of “prior art” to establish that the alleged secrets are either generally known or readily ascertainable. With respect to both issues, and unlike applicable patent law, this evidence can consist of information that existed both before and after the development of plaintiff’s alleged trade secrets. Thus, an important defense strategy is for a defendant in a trade secret case to first determine what the alleged trade secrets are, and then to search publicly available information to see if the information exists elsewhere. As discussed previously, this information could conceivably include all publicly known or readily ascertainable information from throughout the world.
- of trade secrecy; without it the putative trade secret owner cannot bring a successful trade secret misappropriation claim. , 422 A.2d 148, 154 (Pa. Super. Ct. 1980);
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Chapter 1. The Theories, Origin, and Evolution of Trade Secret Law 33 results (showing 5 best matches)
- The third factor leading to the drafting and adoption of the UTSA was a desire to improve trade secret law as it had developed at common law. Many businesses and their attorneys were concerned about the incomplete and inconsistent development of trade secret doctrine and, thus, advocated for a uniform act to make trade secret law more consistent and predictable. As explained in the Prefatory Note to the UTSA, “[n]otwithstanding the commercial importance of state trade secret law to interstate business, this law has not developed satisfactorily.” Unif. Trade Secret Act (amended 1985), Prefatory Note, reprinted in Appendix A. Based upon a review of the various drafts of the UTSA, the principal issues of concern were: (1) the definition of a trade secret; (2) the meaning of misappropriation; (3) the availability, scope, and length of injunctive relief; (4) the nature and extent of monetary relief, including punitive damages and attorney’s fees; (5) the treatment of trade secrets during...
- The foregoing leads to the third, but seemingly illogical, purpose of trade secret law. It emerged out of when the Supreme Court had to explain how state trade secret law did not interfere with the disclosure purpose of patent law. The court concluded that trade secret law does not conflict with the disclosure goals of U.S. patent law because it facilitates the sharing of information, albeit on a smaller scale. ., 416 U.S. at 484–486 (commenting that the abolition of trade secret law would result in the hoarding rather than the dissemination of knowledge). This is due to a concept of trade secret law known as “relative secrecy.” Pursuant to this concept, explained in greater detail in § 3.1, trade secrets do not have to be kept absolutely secret to be protected but can be shared pursuant to an express or implied duty of confidentiality.
- As corporate and business interest in intellectual property increased and trade secrets began to be seen as a form of intellectual property, another purpose of trade secret law was identified; namely, to encourage invention and innovation. ., 416 U.S. 470, 481–482 (1974) (“Trade secret law will encourage invention in areas where patent law does not reach, and will prompt the independent innovator to proceed with the discovery and exploitation of his invention.”) The incentive rationale and utilitarian view of trade secrecy is consistent with the principal rationales for patent and copyright law and is based upon economic theory and assumptions about what motivates individuals to invent and create. Trade secret law is said to supplement patent law and provide a means of internalizing the benefits of innovation. David D. Friedman, William M. Landes, & Richard A. Posner,
- By the mid-1930s, enough trade secret principles had developed so that in 1939 the American Law Institute could “restate” the law of trade secrecy in three sections of the ections 757, 758, and 759. Although not very lengthy or detailed, section 757 generally describes the primary tortious activity (or wrong) of a trade secret claim as the disclosure of another’s trade secret (1) when the discovery of the trade secret was by improper means, (2) the disclosure was made in breach of a duty of confidentiality, or (3) the disclosure was by a third party (not the original misappropriator) who had knowledge that the trade secret was improperly
- While the common law of trade secrecy developed in the U.S. for over one hundred years, a variety of events and forces transpired in the middle-part of the Twentieth Century to convince members of the practicing bar that a uniform trade secret law was advisable.
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Chapter 4. Trade Secret Litigation 152 results (showing 5 best matches)
- In placing the foregoing requirements on idea submission claims, courts recognize that even outside the context of trade secret litigation there should be limits on the type of information that can be protected under the law. What these limits are and how to articulate and apply them is an unsettled aspect of what has fairly recently been labeled “information law.”
- The prototypical trade secret case involves the actual or threatened disclosure of trade secrets by a person (often a former employee) who knew or should have known of the existence of the trade secrets and subsequently acted in a manner that constitutes misappropriation of those trade secrets. As long as the subject trade secrets remain in the possession of the direct misappropriator, a lawsuit against that person should suffice to protect the interests of the trade secret owner. Sometimes, however, the direct misappropriator will disclose the trade secrets to another and the issue of third-party (or indirect or secondary) liability arises.
- California law circumvents many of the pleading issues that arise in other jurisdictions by recognizing that a plaintiff in a trade secret misappropriation case need not identify its trade secrets with detailed specificity in the complaint. Rather, California Code of Civil Procedure § 2019.210 provides that: “before commencing discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity.” Consistent with the language of the statute, defendants have been known to resist all discovery efforts until the plaintiff meets its statutory obligation. Thus, it is generally in the best interest of a trade secret plaintiff in California (and elsewhere) to begin the process of identification as soon as possible after the complaint is filed so that discovery will not be delayed, provided that an adequate Protective Order is in place before any disclosure of trade secrets occur.
- in § 4.4.1, the key to imposing liability on third-parties who did not participate in the original misappropriation of trade secrets is to prove that they knew or had reason to know that the information they acquired, disclosed, or used is trade secret information that was misappropriated by someone else. In practice, trade secret owners can enhance the possibility of imposing third-party liability by putting competitors and other potential defendants on notice of the existence of trade secrets and the potential that such trade secrets were (or are about to be) misappropriated. Typically, this is done in a “Notice Letter” in which counsel for a trade secret owner advises a third-party of his client’s trade secret rights and ongoing obligations of confidentiality. Such letters should be drafted carefully so as not to disclose the trade secrets and in a manner that does not constitute defamation or an act of unfair competition.
- As noted above, the need for defendants to learn the specifics about the alleged trade secrets is a necessary part of every trade secret misappropriation case. However, it is not uncommon for a party to other types of litigation to request the production of information that is deemed to be a trade secret. In this “private-party litigation,” as opposed to FOIA-litigation (discussed in §§ 8.5 and 8.6), the requested information either concerns the trade secrets that were allegedly misappropriated or which are relevant to an issue in non-trade secret litigation (for instance, product-liability of environmental cases).
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Chapter 7. Protecting Trade Secrets in the Employment Context 72 results (showing 5 best matches)
- While it is recommended that trade secret protection be made a part of data security procedures generally, a trade secret owner’s compliance with applicable data security laws and norms will not necessarily satisfy the reasonable efforts requirement of trade secret law. In some cases, such efforts may be deemed to be reasonable because such a conclusion depends upon what is reasonable “under the circumstances.” Conversely, evidence that a trade secret owner’s efforts to protect its data do not meet the requirements of data security laws or industry norms may be used as evidence of a lack of reasonable efforts.
- Planning for trade secret security must be done in a proactive rather than a reactive framework. The trade secret owner needs an infrastructure in place to protect its secrets; one that includes specific processes and technological measures. Conducting a risk analysis of potential threats to the company’s trade secrets should be comprehensive, paying attention to people, processes, and technology.
- We learned in § 3.4 that a company’s reasonable efforts to protect trade secrets are critical. Ideally, no company wants to be in the position of having to prove that it engaged in reasonable efforts because it would mean that the company is in litigation and that its trade secrets may already have been misappropriated. However, the safest and most conservative approach for any company that owns trade secrets is to be prepared for the day when it may have to prove its efforts to a court. This means that trade secret protection should not be an afterthought. Instead, the protection of trade secrets requires a conscious risk assessment approach that anticipates and ultimately stems the inappropriate dissemination or disclosure of trade secrets.
- In the absence of an express “Invention Assignment Agreement” or similar agreement, the issue of trade secret ownership is generally resolved by application of common law principles, many of which were developed with respect to disputes concerning patent ownership. ., 228 F.3d 1357, 1359 (Fed. Cir. 2000). As such, the case law and statutes of individual states should be consulted to determine the rules regarding trade secret ownership in each state. In most states, the general rule is that the inventor/creator owns the trade secrets. However, there are three important and well-established exceptions. Restatement (Third) of Unfair Competition § 42, cmt. e (1995); Restatement (Second) of Agency § 397, cmts. a and g (1958).
- The wide use of computer technology in the workplace poses a grave threat to employers’ trade secrets because the trade secrets can be easily and quickly taken and disseminated to others. Accordingly, the opportunity created by computers combined with the motivation to be unfaithful to an employer has led to the prevalence of employees using technology to misappropriate trade secrets. A sampling of cases show how e-mail, laptops, zip drives, and flash drives, can be hazards to trade secrets, even by those without high-tech training.
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Chapter 9. Protecting Trade Secrets Internationally 27 results (showing 5 best matches)
- To date, the European Union has not adopted a Directive with respect to trade secrets, but some individual countries within the E.U. have adopted trade secret laws. Others rely upon common law or general principles of unfair competition. Study on Trade Secrets and Parasitic Copying (Look-a-likes), MARKT/2010/20/D, Report on Trade Secrets for the European Commission, (Hogan Lovells Intern’l, LLP 2011) (noting that “[a]ll Member States offer some form of protection although in one or two Member States protection is extremely limited”). For instance, in the United Kingdom, trade secrets are protected by contract law and principles of unfair competition. In Norway, section 25 in the Fair Marketing Practices Act of 2009 prohibits all acts that are against “fair business practices” and has been deemed to apply to trade secret misappropriation claims.
- In order to comply with Article 39, many countries adopted trade-secret protection statutes, copies of which can be found through the WTO website. However, as noted in Article 39.1, the obligation of WTO-member countries to protect trade secrets is specifically tied to a pre- existing obligation under Article 10 the Paris Convention that requires countries to “assure … effective protection against unfair competition.” Thus, in some countries, particularly countries with a common law tradition (like the United Kingdom and India), trade secret law may be governed by general principles of unfair competition, much like the historic origins of trade secret law in the United States.
- The civil trade secret jurisprudence in the U.S. currently lacks a specific framework for determining when U.S. trade secret law will apply to misappropriation that occurs on foreign soil. Unlike U.S. patent law that includes specific provisions with “extraterritorial” affect, neither the UTSA nor the address this issue. If a trade secret owner wants to sue another in United States courts for trade secret misappropriation occurring in another country, it will have to rely upon general principles of extraterritoriality. Furthermore, under general principles of personal jurisdiction, ordinarily a foreign defendant must have a sufficient “presence” in the United States or the tort or consequent injury must occur in the United States before it can be sued in courts within the United States.
- Developments in a relatively recent case before the ITC appear to provide an avenue for American trade secret owners to redress trade secret misappropriation that has occurred entirely on foreign soil. Using section 337 of the Tariff Act of 1930 (a trade statute that protects United States industry from unfair foreign competition) the Federal Circuit upheld the ITC’s decision to apply U.S. trade secret law to misappropriation that occurred in China.
- The civil enforcement of trade secrecy in Canada is determined by the laws of each Province. Generally, in keeping with its common-law heritage, the Provinces of Canada (with the exception of the Province of Quebec which is a civil law jurisdiction) have no uniform statutes governing the civil enforcement of trade secret rights. Rather, a claim for trade secret infringement must be brought under principles of common law, including principles of unfair competition.
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Chapter 10. Trade Secret Related Crimes 47 results (showing 5 best matches)
- There may also be significant definitional differences between the applicable civil trade secret statute and the criminal trade secret statute with respect to both the definition of a trade secret and the meaning of misappropriation. In jurisdictions, where trade secret law is based upon common law principles that were developed before the criminal statutes, the civil definitions of a trade secret and misappropriation tend to differ from the state criminal statute (especially if the state’s criminal statute is modeled after the federal Economic Espionage Act or the UTSA). Conversely, in a civil UTSA jurisdiction, the criminal statute may define a trade secret to include only scientific or technical information, thus narrowing the scope of subject matter that can be prosecuted under the statute. This appears to be the case in Alabama, ...§ 13A–8–10.4(a)(4) (2013); Ark. Code Ann. § 5–36–101(11) (West 2012); N.H. Rev. Stat. Ann. § 637:2(I) (2013); Utah Code Ann. § 76–6–401(1) (West...
- Because the principal wrongdoing as defined by the CFAA is “accessing a protected computer,” its provisions conceptually overlap with the improper acquisition provisions of trade secret law. § 4.3. Generally, if the facts of a trade secret case involve the acquisition of trade secrets that are stored on a computer, the defendant in a civil trade secret case should also be concerned about potential criminal prosecution under the CFAA.
- Although the property/not property debate of trade secret law continues ( § 1.4), there is no question that trade secrets will be treated as a form of property for some purposes. Whether this is true for property crimes depends upon the wording of the applicable criminal statute and whether intangible property rights are covered. Sometimes, statutes involving property crimes are worded or interpreted to cover intangible property, like trade secrets. ., Del. Code Ann. tit. 11, § 857(6), (9) (West 2013) (including trade secrets in definition of property for theft crimes); Minn. Stat. Ann. § 609.52 (West 2013) (defining property subject to theft as including trade secrets). For purposes of potential criminal liability, however, it is also important to recognize that trade secrets may be embodied (or fixed) in a tangible form, the theft of which may be a crime.
- In states that do not have specific criminal trade secret statutes, other laws which prohibit larceny, property theft, or the receipt of stolen property may cover trade secret misappropriation, particularly if the alleged trade secrets are embodied in a tangible form. ., Del. Code Ann. tit. 11, § 857(6), (9) (West 2013) (including trade secrets in definition of property for theft crimes); , 402 S.W.2d 906 (Tex. Crim. App. 1966) (involving prosecution for theft of confidential computer programs before Texas adopted a criminal trade secret statute). Criminal defendants in trade secret cases may also be charged with other related statutory provisions such as violation of state or federal computer
- In addition to each state recognizing a claim for civil trade secret misappropriation under either the UTSA or common law, many states (about half) have enacted criminal statutes that are specifically directed at trade secret theft. ., Ala. Code § 13A–8–10.4(b) (2013); Ark. Code Ann. § 5–36–107 (West 2012); Calif. Penal Code § 499c (West 2013); Colo. Rev. Stat. Ann. § 18–4–408(1) (West 2013); Ga. Code Ann. § 16–8–13 (West 2012); Tex. Penal Code Ann. § 31.05(b) (West 2011). In these jurisdictions it is therefore possible for a defendant in a civil trade secret misappropriation case to also face state criminal charges for the same alleged misappropriation.
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Appendix. Uniform Trade Secrets Act with 1985 Amendment 96 results (showing 5 best matches)
- The Uniform Act codifies the basic principles of common law trade secret protection, preserving its essential distinctions from patent law. Under both the Act and common law principles, for example, more than one person can be entitled to trade secret protection with respect to the same information, and analysis involving the “reverse engineering” of a lawfully obtained product in order to discover a trade secret is permissible. Uniform Act, Section 1(2) (misappropriation means acquisition of a trade secret by means that should be known to be improper and unauthorized disclosure or use of information that one should know is the trade secret of another) 187 USPQ 47, 48 (D.Md.1975) (alternative holding) (prior, independent discovery a complete defense to liability for misappropriation) , 182 USPQ 135, 144–45, (N.D.Ill.1974) (alternative holding) (unrestricted sale and lease of camera that could be reversed engineered in several days to reveal alleged trade secrets preclude relief...
- is not a comprehensive remedy
- Notwithstanding the commercial importance of state trade secret law to interstate business, this law has not developed satisfactorily. In the first place, its development is uneven. Although there typically are a substantial number of reported decisions in states that are commercial centers, this is not the case in less populous and more agricultural jurisdictions. Secondly, even in states in which there has been significant litigation, there is undue uncertainty concerning the parameters of trade secret protection, and the appropriate remedies for misappropriation of a trade secret. One commentator observed:
- Like traditional trade secret law, the Uniform Act contains general concepts. The contribution of the Uniform Act is substitution of unitary definitions of trade secret and trade secret misappropriation, and a single statute of limitations for the various property, quasi-contractual, and violation of fiduciary relationship theories of noncontractual liability utilized at common law. The Uniform Act also codifies the results of the better reasoned cases concerning the remedies for trade secret misappropriation.
- a distinguishable
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Chapter 8. Protecting Trade Secrets in the Governmental Context 54 results (showing 5 best matches)
- The regulations of the Securities and Exchange Commission provide an illustration. They provide for nondisclosure of confidential business information. However, no specific definition of “trade secret” or “confidential information” appears to be included in the SEC regulations, even though mention is made of trade secrets in a few areas. Rather, the regulations appear to incorporate FOIA and a catchall of “other reason[s] permitted by Federal law,” which would encapsulate trade secrets. Nevertheless, the fact that confidential business information comprises a broader group of information of which trade secrets are a subset leaves no doubt that the rules would cover trade secrets.
- To the extent companies are required to disclose their trade secrets to the government, they should be concerned whether and how those trade secrets will be protected. Elizabeth A. Rowe,
- The university refused to disclose the information claiming that they were trade secrets. The Connecticut Supreme Court agreed, finding that the Connecticut Trade Secrets Act expressly applies to both public and private entities, and that the status of the university as a public institution did not negate its ability to claim trade secret protection for information that it created and maintained as a trade secret. The fact that the university was not an entity engaged in trade was irrelevant.
- If a company submitted trade secret information to the government and that information was disclosed by the government to the public, it is the trade secret owner who ultimately bears the costs of the government’s misguided actions. This is in part because when a trade secret is revealed, it loses all of its value, the loss is irreparable, and the company may not be made whole by monetary damages.
- There are a number of ways that trade secret issues arise in the governmental context. The first involves the sharing of trade secrets or other information with the government because of regulatory oversight. § 8.2. This includes, for instance, the voluntary inclusion of potential trade secrets in patent applications. § 8.3. Sometimes, however, companies are reluctant or refuse to share trade secrets and other confidential information with governmental officials and this raises a host of public-policy concerns.
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Chapter 6. Remedies for Trade Secret Misappropriation 51 results (showing 5 best matches)
- As a practical matter, the duration of a permanent injunction depends upon the status of the plaintiff’s trade secrets at the time the injunction is issued. If the trade secrets are no longer secret at that time, then an injunction is not needed to prevent them from being disclosed to the public, but may be needed to prevent the defendant from benefiting from his wrongdoing. If a plaintiff’s trade secrets retain their trade secret status at the time a judgment is about to be ordered, then it may be appropriate to grant injunctive relief without a temporal limit, subject to the right of the defendant to apply to the court to terminate the injunction if and when the trade secrets lose their secrecy. Under either scenario, a court (except in non-UTSA jurisdictions) is likely to limit the length of an injunction to the time that it would take a person who is skilled in the art to reverse engineer or independently develop the trade secrets.
- One of the reasons that statutes are often drafted in cases where there are similar common law claims for relief is due to the limited scope of common law remedies. This is certainly true with respect to common law intellectual property torts, such as trade secret misappropriation. At common law it was often difficult for trade secret plaintiffs to prove actual damages or the basis for injunctive relief. The remedies provisions of the UTSA help solve this problem by specifying the types of available remedies and the conditions under which they will be granted. Unif. Trade Secrets Act §§ 2–5 (amended 1985), reprinted in Appendix A. In non-UTSA jurisdictions, the available remedies as developed in each jurisdiction apply.
- If a plaintiff in a trade secret case acts quickly and is successful in preventing the actual use or disclosure of its trade secrets, then there should be no actual harm, no matter how measured. On the other hand, if there is evidence that the defendant used or disclosed the secrets, an award of compensatory damages is possible. The measure of damages for the wrongful disclosure of trade secrets is likely to be the actual and potential value of the secrets to the plaintiff if there had been no disclosure.
- The length of a reasonable royalty under UTSA § 2(b) is limited to the “duration of the competitive advantage.” Uniform Trade Secrets Act § 2(b), cmt (amended 1985). Under UTSA § 3(a), the reasonable royalty is an alternative measure of compensatory damages and usually will be stated as a “lump-sum,” particularly in cases where the subject information lost its trade secret status before the entry of judgment. In cases where the trade secrets continue to exist, the reasonable royalty measure of damages is usually for the period of defendant’s wrongful use of the trade secrets.
- An issue that arises in trade secret cases at both the preliminary and permanent injunction stages is whether the equitable factor of “irreparable harm” can be presumed from a finding of trade secret misappropriation. If so, then the burden on the issue of irreparable harm shifts to the defendant to establish that monetary damages are adequate to compensate the plaintiff for any future loss of trade secrets.
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Table of Authorities 14 results (showing 5 best matches)
- Sandeen, Sharon K., The Limits of Trade Secret Law: Article 39 of the TRIPS Agreement and the Uniform Trade Secrets Act on which it is Based, in The Law and Theory of Trade Secrecy 537 (Edward Elgar 2011) --------------------- 251
- Sandeen, Sharon K., The Evolution of Trade Secret Law and Why Courts Commit Error When They Do Not Follow the Uniform Trade Secrets Act, 33 Hamline L. Rev. 493 (2010) --------------------- 11, 164
- Rowe, Elizabeth A., Striking a Balance: When Should Trade-Secret Law Shield Disclosures to the Government?, 96 Iowa L. Rev. 791 (2011) --------------------- 129, 228
- Rowe, Elizabeth, A., Introducing A Take-Down for Trade Secrets on the Internet, 2007 Wisconsin Law Review 1041 (2007) --------------------- 118, 169
- Rowe, Elizabeth A., Trade Secret Litigation and Free Speech: Is it Time to Restrain the Plaintiffs?, 50 Boston College Law Rev. 1425 (2009) --------------------- 170, 196
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About the Authors 2 results
- Elizabeth A. Rowe is a Professor of Law at the University of Florida Levin College of Law and the Director of the Program in Intellectual Property Law. She teaches Trade Secret Law, Corporate Espionage, Trademark Law, and Patent Law. Professor Rowe is currently the holder of the University of Florida Research Foundation Professorship as well as the Feldman Gale Term Professorship in Intellectual Property Law. She is a former litigation partner at Hale and Dorr (now WilmerHale) in Boston where her practice focused largely on trade secret litigation and employment litigation. She received her Juris Doctorate, , from Harvard Law School, and her Master of Arts and Bachelor of Arts degrees from the University of Florida. She is a member of the Massachusetts Bar.
- Sharon K. Sandeen is a Professor of Law at Hamline University School of Law in Saint Paul, Minnesota where she teaches a variety of intellectual property courses, including trade secret law. Prior to starting her teaching career, she practiced law in California for over fifteen years where she specialized in IP litigation, protection, and counseling. Professor Sandeen received an LL.M. from the University of California, Berkeley School of Law (Boalt Hall), a Juris Doctorate from the University of Pacific, McGeorge School of Law, and a Bachelor of Arts degree from the University of California, Berkeley. She is a Fellow of the American Bar Foundation and a member of the California Bar.
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Acknowledgments 5 results
- The Uniform Law Commission (also known as the National Conference of Commissioners of Uniform State Laws) not only allowed us to quote extensively from the Uniform Trade Secrets Act (UTSA), but gave us permission to include the entirety of the UTSA (as amended in 1985), with commentary, in Appendix A to this book.
- Professor Rowe wishes to acknowledge and thank her many current and former law students who have continued to motivate her study of trade secret law. She is grateful to Matthew Morrow for his research assistance on this book, as well as previous trade secret research assistants, including most recently, Jonathan Blocker, Jessica DaFonte, Derek Fahey, Constance Jones, Seth Jones, Daniel Mahfood, Alicia Phillip, Abood Shebib, Robyn Shelton, Adrianna Swedowski, and Mi Zhou, whose contributions are indirectly reflected herein. Thanks also to the University of Florida Levin College of law for its generous research support.
- Professor Sandeen wishes to thank her research assistants, particularly Jessica Alm and Holly Danielson, for their excellent work on the final review and cite-checking for this book. Credit also goes to a long-list of research assistants who helped with trade secret research throughout the years, including most recently, Lauren Dwyer, Jameelah Haadee, Mike Ryan, and Michael Mangold.
- Throughout the book you will find excerpts from the Restatement (First) of Torts (Copyright 1939 by the American Law Institute) and the Restatement (Third) of Unfair Competition (Copyright 1995 by the American Law Institute). These materials are reprinted with permission of The American Law Institute. All right reserved.
- We have many people and several organizations to thank for assisting us with the publication of this book. We are particularly grateful to the American Law Institute and the Uniform Law Commission for allowing us to reprint portions of their copyrighted works.
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Outline 49 results (showing 5 best matches)
- § 2.1 Definition of a Trade Secret under the Uniform Trade Secrets Act
- § 2.4 Comparing the Definitions of a Trade Secret under the Different Sources of Law
- § 1.1 The Common Law Development of Trade Secret Law
- Chapter 1. The Theories, Origin, and Evolution of Trade Secret Law
- § 1.3 The Purposes of Trade Secret Law
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Index 53 results (showing 5 best matches)
Copyright Page 4 results
- Nutshell Series, In a Nutshell
- This publication was created to provide you with accurate and authoritative information concerning the subject matter covered; however, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. The publisher is not engaged in rendering legal or other professional advice and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
- Printed in the United States of America
- © 2013 LEG, Inc. d/b/a West Academic Publishing
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Title Page 5 results
Advisory Board 11 results (showing 5 best matches)
- Professor of Law, Michael E. Moritz College of Law,
- Professor of Law Emeritus, University of San Diego Professor of Law Emeritus, University of Michigan
- Professor of Law, Chancellor and Dean Emeritus, Hastings College of the Law
- Professor of Law, Yale Law School
- Professor of Law, Pepperdine University Professor of Law Emeritus, University of California, Los Angeles
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Table of Statutes 8 results (showing 5 best matches)
- Mich. Comp. Laws. Ann. 15.243 (West 2012) --------------------- 234
- 18 U.S.C. § 1831(a) and 1832(a) --------------------- 267
- 18 U.S.C. § 1030(a)(2)(C)(g) (2006) --------------------- 141
- 18 U.S.C. § 1832(a) (2013) --------------------- 268, 269, 273, 274
- 18 U.S.C. § 1839(3)(A) (2006) --------------------- 76
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Table of Cases 5 results
- Publication Date: August 6th, 2013
- ISBN: 9780314281166
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: Trade Secret Law is the first and only book in the Nutshell series to cover trade secret law in depth. It was written as a companion to Cases and Materials on Trade Secret Law by Rowe and Sandeen (the first casebook on trade secret law), but adds more practical advice. Thus, it is a useful resource for attorneys and law students alike. It could be a supplement to a course on trade secret law or an IP survey course that covers trade secret law, as most now do. Like the casebook, it focuses on the predominate law governing trade secrets in the U.S.: The Uniform Trade Secrets Act (now applicable in 47 of 50 states). Trade Secret Law in a Nutshell addresses both international and criminal enforcement of trade secret rights. In February of 2013, President Obama issued a report calling for increased enforcement of trade secret rights, both domestically and internationally, making the topic both current and relevant.