- Commentary Sheds Light on Appropriate Level of Detail for Plaintiffs in Misappropriation CasesThis May was the fourth anniversary of the Defend Trade Secrets Act (DTSA), signed into law by President Obama on May 11, 2016. The DTSA does not preempt state laws and plaintiffs can still bring cases under their state’s trade secrets law, but the DTSA has played a big role ... Read More
- WIPO Revises and Expands AI Policy IssuesThe World Intellectual Property Organization (WIPO) has published a Revised Issue Paper on Artificial Intelligence and IP Policy. The Revised Issues Paper updates the Draft Issues Paper published in December 2019 with the addition of a glossary and sections on trademarks and trade secrets, and an expansion of the sections ... Read More
- To Disclose Or Not to Disclose: Responding to Trade Secrets Misappropriation By an EmployeeAn employee comes to you with a recipe for your competitor’s “secret sauce.” You know she worked for your competitor before coming to work for you. How do you respond? It’s an important question, because it may go to the core integrity of your organization and because exploring this trade ... Read More
- If trade secrets misappropriation claims can be brought by non-owners, what should companies do to manage risk?Last week, we examined the recent Third Circuit decision in Advanced Fluid Systems, which held that a trade secrets plaintiff did not need to be an owner or a licensee of the alleged trade secrets to bring a state law misappropriation claim under Pennsylvania’s UTSA—all that was required was that ... Read More
- Trade Secret Litigation Reports: Four Years After the Enactment of the Defend Trade Secrets ActOn May 11, 2016, President Obama signed into the law the Defend Trade Secrets Act (DTSA) which extended the Economic Espionage Act of 1996 (EEA), which provides a broad basis for civil federal jurisdiction for the theft of trade secret thefts. Thus, trade secret owners can sue in federal court ... Read More
- Spoliation by Self-Driving Startup Leads to Terminating SanctionsDuring the course of a trade secrets litigation, neglecting to preserve electronically stored information (“ESI”) may result in a finding of spoliation. In a recent Order issued by Judge Edward Davila (United States District Court, Northern District of California), two startups in the autonomous vehicle industry, WeRide and AllRide, learned ... Read More
- Trade Secret Ownership: Possession is Nine-Tenths of the LawWhen a plaintiff asserts claims of trade secret misappropriation, it must own the underlying trade secrets, right? Wrong. According to the Third Circuit’s April 30, 2020 decision in Advanced Fluid Systems, Inc. v. Huber, under state law, the plaintiff only needs to prove lawful possession. In 2009, Advanced Fluid Systems, ... Read More
- USTR Special 301 Report and Review of Notorious Markets Highlight Continued Concerns with ChinaOn April 29, the Office of the U.S. Trade Representative (USTR) released its 2020 Special 301 Report on Intellectual Property Protection and its 2019 Review of Notorious Markets for Counterfeiting and Piracy. The Report identifies countries and IP-related market access barriers and steps necessary to address those barriers. Section I of the ... Read More
- Ajaxo v. E*Trade: How (Not) to Prove a Reasonable Royalty for Trade Secret MisappropriationThe latest appellate decision in the nearly 20-year legal battle between Ajaxo and E*Trade highlights the importance of expert discovery and a well-developed trial court record for a plaintiff attempting to claim reasonable royalties for trade secret misappropriation. The saga between Ajaxo and E*Trade began back in the late 1990s, ... Read More
- The Transmissibility of Information: How Your Trade Secrets Are Like a VirusIf you run a business that depends on data to drive success — and what business doesn’t these days? — this tendency of information assets to escape is a major, perhaps existential, risk. Given that those assets are handled by human beings, the management challenge can feel a lot like ... Read More
- Joint Ventures & COVID-19: How to Protect Trade Secrets when Partnering with Competitors to Meet PPE and Ventilator DemandCOVID-19 has presented countless challenges, among them, the extraordinary need—and conversely, extreme shortages—of basic protective gear, ventilators, and personal protective equipment (“PPEs”) for healthcare professionals and essential businesses. With these challenges come a myriad of opportunities for companies to develop, engineer, and deploy novel ways to address the shortage. Possible ... Read More
- Does the Inevitable Disclosure Doctrine Apply Under the DTSA? It Depends on the State.The Defend Trade Secrets Act (“DTSA”) went into effect in May 2016. Since then, federal courts have largely adhered to existing law in their respective states to determine whether the inevitable disclosure doctrine applies to DTSA claims. This article provides a sampling of existing opinions that have either permitted or ... Read More
- Protecting IP in a COVID-19 Remote-Work-WorldEven before the COVID-19 pandemic, many employers offered remote work options. Now employers all over the world are encouraging or requiring their employees to work remote from home. This means employees are accessing, maintaining, and sharing proprietary information outside of the office more frequently than ever before, thereby increasing the ... Read More
- Do Your Homework: Keeping Trade Secrets Safe While Working RemotelyAn essential element of trade secret protection is that the owner has made “reasonable” efforts to keep the information a secret. But as the Uniform Trade Secrets Act tells us, those efforts must be reasonable “under the circumstances.” When circumstances change, as they have recently, we need to recalibrate. In ... Read More
- In Pursuit of Chinese Trade Secret Theft: Fresh Allegations Against Huawei and Chinese Military Grabs 145 Million SSNsLoyal readers are familiar with the DOJ’s “China Initiative,” launched in November 2018 to prosecute the theft of U.S. trade secrets by or for Chinese interests. Attorney General Barr reaffirmed the DOJ’s commitment “to combat the threat posed by theft directed and encouraged by the PRC” in an address at ... Read More
- The Fragile Nature of Trade Secrets: Clues from the Courts on How to Keep ThemTrade secrets have become an increasingly valuable asset to many companies, but compared to other types of intellectual property, including patents, copyrights and trademarks, they are extremely “fragile,” and require that an owner undertake as many steps as possible to protect their information and be vigilant about the need to ... Read More
- You Own It, Now What Are You Going to Do with It? – Why Trade Secrets Are Treated Like Property: Part 2In last month’s post, Part 1 of this series, we considered the view of European academics that trade secrets are not “intellectual property” because they don’t give the power to exclude others, like patents, copyrights and trademarks do. But considering that trade secrets are treated throughout the world like a ... Read More
- The China Initiative: Combating Economic Espionage and Trade Secret ExfiltrationOpen innovation is a key ingredient to the development of valuable intellectual property. Research institutions, universities, and private businesses work in close collaboration with one another, sharing confidential business information, processes, and trade secrets in order to create content. But while open innovation is a boon to creativity it is ... Read More
- Review of Key 2019 Trade Secret Decisions and Trends (Part II)Part I of this series covered (1) Food Marketing Institute v. Argus Leader Media, 139 S.Ct. 2356 (2020) in which the Supreme Court held that commercial or financial information that is customarily and actually treated as private by its owner and provided to the government under an assurance of privacy ... Read More
- Seven Steps to Address Trade Secret Misappropriation by WhistleblowersThe primary purpose of the Defend Trade Secrets Act (DTSA) is to provide federal remedies to individuals and companies that have had their trade secrets misappropriated. That is not, however, its sole purpose. One of the DTSA’s more controversial provisions actually protects certain alleged misappropriators by precluding DTSA liability when ... Read More
- It’s About Control, Not Exclusion: Why Trade Secrets Are Treated Like Property, Part 1Sometimes it seems that trade secrets are always fighting for respect. I recently ran into a friend who teaches at a European university. He somehow found a way to squeeze into the conversation a pronouncement: “You know, trade secrets are not property.” Stay with me; this gets interesting. I sighed, ... Read More
- Trade Secrets Review: Key 2019 Decisions and Trends (Part I)In general, a trade secret is any information used in business if the owner has taken reasonable measures to keep such information secret, and the information derives independent economic value, from not being generally known to, and not being readily ascertainable through proper means by the public. Almost every state ... Read More
- FTC Holds Workshop Examining Potential for Regulation of Non-Compete AgreementsAfter a busy year for non-compete regulation at the state level, the Federal Trade Commission (FTC) held a public workshop last Thursday in Washington D.C. to examine the legal basis and economic support for a contemplated FTC rule restricting the use of non-compete clauses in employment agreements. A link to the ... Read More
- Indirect Competition Enough to Enforce Non-Compete Against Former CEO in PennsylvaniaIn the midst of nationwide efforts to reform the use of non-compete restrictions, a recent decision from the Eastern District of Pennsylvania illustrates the broad approach courts may take when enforcing restrictive covenants against high-level executives. In an order denying an appeal to the preliminary injunction he issued earlier this ... Read More
- Trusting Your Secrets to the GovernmentAccording to Merriam-Webster, the “Word of the Year for 2019 is “they” when used in the singular, typically to avoid ascribing a gender to the person being referred to. The larger point is this: language matters. Since this is a space dedicated to secrecy, let's consider how we use language ... Read More
- In a Blockbuster Economic Espionage Act Prosecution, an Attempt by the Government to Hide the Ball?An ongoing, headline-grabbing trade secret theft prosecution against a Chinese spy is also quietly presenting a, say, disquieting attempt by prosecutors to stretch the law on what it is required to plead and prove. On the civil side, when a plaintiff sues for trade secret theft, there’s almost always a ... Read More
- Eight Tips to Protect Your Trade Secrets with Effective Restrictive Covenant AgreementsTrade secret theft is often an inside job. Employees who know they’re about to leave for a competitor or start their own competing business will sometimes try and get an unfair head start by taking their employer’s confidential information—customer lists, strategic plans, etc.—as they head out the door. A necessary ... Read More
- From Corn-Gate to You-Stole-My-Trade-Secrets-Gate (Maybe): Defendant Beer Maker Moves to Add a Counterclaim for Trade Secrets Misappropriation in False Advertisement LitigationMillerCoors (beer maker of Coors Light and Miller Lite) and Anheuser-Busch (“AB”) (competing beer maker of Bud Light) have been embroiled in a contentious federal district court litigation in the W.D. of Wisconsin since March 2019. MillerCoors filed a lawsuit against AB for false advertising and trademark dilution shortly after ... Read More
- Netlist Wins ITC Exclusion Order: Will the USPTO Support It?Several weeks ago, the International Trade Commission (ITC) announced that Chief Administrative Law Judge (ALJ) Charles Bullock issued a Notice of Initial Final Determination recommending that certain memory modules manufactured and imported by SK Hynix, Inc. and its subsidiaries should be excluded from importation into the United States. As is ... Read More
- Other Barks & Bites, Friday, November 15: SCOTUS to Hear Booking.com Trademark Case, AG Barr Backs FCC Plan Against Huawei and ZTE, Copyright Office Eliminates Physical Material Submission OptionsThis week in Other Barks & Bites: the Federal Circuit strikes down a district court’s finding of design patent infringement on summary judgment; the USPTO advises trademark attorneys to monitor filings to prevent against the unauthorized use of their names; the U.S. Copyright Office issues final rules eliminating options for ... Read More