Misappropriation of Trade Secrets Quiz

PDF page 181: The first type of misappropriation under the UTSA is acquisition of a trade secret through improper means. Specifically, the UTSA prohibits the “acquisition of a trade secret of another, by a person who knows or has xxii reason to know the trade secret was acquired by improper means.” “Improper means” includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage xxiii through electronic or other means. In short, the first type of misappropriation is the mere possession of a trade secret that has been acquired through theft or the breach of a duty to maintain the secrecy of the trade secret.

PDF page 181: The first type of misappropriation under the UTSA is acquisition of a trade secret through improper means. Specifically, the UTSA prohibits the “acquisition of a trade secret of another, by a person who knows or has xxii reason to know the trade secret was acquired by improper means.” “Improper means” includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage xxiii through electronic or other means. In short, the first type of misappropriation is the mere possession of a trade secret that has been acquired through theft or the breach of a duty to maintain the secrecy of the trade secret.

PDF page 181: The second type of misappropriation under the UTSA is the disclosure or use of someone else’s trade secret without their express or implied consent. Although the statutory definition is somewhat complicated, the UTSA essentially prohibits the disclosure or use of a trade secret that is possessed as a result of theft, breach of a xxiv duty to maintain its secrecy, or an accident or mistake on the part of the trade secret owner. In short, the UTSA prohibits the disclosure or use of a trade secret that is possessed as a result of “improper means” as defined in the preceding paragraph. The rule of thumb is that if you possess, disclose, or use a trade secret that you know or have reason to know is not intended to be revealed to you, beware.

PDF page 181: The UTSA’s definition of misappropriation is rather broad. The protection granted to trade secret owners under the UTSA is further expanded by prohibiting not only the actual, but also the threatened, misappropriation of trade secrets. The distinction between these two types of misappropriation is basically one of timing. The UTSA prohibits the actual disclosure of trade secrets and provides remedies for those whose trade secrets have already been misappropriated. A more difficult question arises, however, with respect to a trade secret owner’s rights prior to the actual misappropriation of trade secrets. To address a trade secret owner’s legitimate concerns that misappropriation may occur in the future, the UTSA prohibits “threatened” misappropriation.

PDF page 181: A trade secret owner may assert legal rights subsequent to any actual unauthorized disclosure or use of trade secrets. In such situations, the wrong has already occurred and the trade secret owner may seek judicial intervention concerning any legal rights that were violated. This is true regardless of whether the misappropriator obtained the secret without the owner’s consent, or originally with consent but later used the secret for the misappropriator’s own gain. The burden of proof in an actual misappropriation case is still squarely on the shoulders of the trade secret owner who is alleging that trade secrets have been misappropriated. This burden of proof requires the trade secret owner to demonstrate that he or she was in possession of knowledge or information that was not generally known and was valuable precisely because it was not generally known, and that the knowledge or information was subject to efforts that were reasonable under the circumstances to maintain its secrecy. Depending on the facts and circumstances of a given case, together with the nature of the intellectual property to be protected, proving the elements necessary to make out a trade secret case can be a challenging undertaking. The best way to establish a foundation for successful prosecution of trade secret misappropriation is to follow closely the provisions of a written trade secret protection plan, and take measures to ensure the security of the information as discussed above.

PDF page 181: Perhaps the most interesting trade secret cases involve the alleged threatened misappropriation of trade secrets. In these cases, the trade secret owner does not contend that their trade secrets have already been compromised, but rather that unless some action is taken to halt the current progress of events, their trade

PDF page 182: secrets will be misappropriated at some time in the future. Threatened misappropriation cases often arise when a highly skilled or trained employee who has been exposed to a company’s trade secrets leaves the company’s employ and goes to work for a competitor. On the one hand, the former employer may well have legitimate concerns about possible disclosure of its trade secrets to a competitor; on the other hand, the employee has a right to choose an employer. Consequently, courts are required to balance these competing interests. The result often depends on the legitimacy of the trade secret owner’s concerns of misappropriation and the nature of the evidence that is available to substantiate those concerns.

PDF page 182: When faced with a situation where an employee who has been exposed to trade secrets leaves to work for a new employer, courts typically consider three factors: (1) whether the former employer and the new employer are competitors, (2) whether the employee’s new position is comparable to the former position, and (3) the xxv efficacy of steps taken by the new employer to prevent the misappropriation of trade secrets. Mere suspicion that another party may have wrongfully disclosed or used one’s trade secrets, in and of itself, does not enable the trade secret owner to assert these rights successfully. Courts will not prohibit the wrongful use or disclosure of trade secrets based upon the mere uneasiness or suspicions of the trade secret owner that some misappropriation may occur. Rather, the trade secret owner is required to demonstrate that the concerns of misappropriation are legitimate. In most situations, this means that the trade secret owner will be required to present evidence, either direct or circumstantial, that misappropriation is likely to occur.

PDF page 182: When faced with a situation where an employee who has been exposed to trade secrets leaves to work for a new employer, courts typically consider three factors: (1) whether the former employer and the new employer are competitors, (2) whether the employee’s new position is comparable to the former position, and (3) the xxv efficacy of steps taken by the new employer to prevent the misappropriation of trade secrets. Mere suspicion that another party may have wrongfully disclosed or used one’s trade secrets, in and of itself, does not enable the trade secret owner to assert these rights successfully. Courts will not prohibit the wrongful use or disclosure of trade secrets based upon the mere uneasiness or suspicions of the trade secret owner that some misappropriation may occur. Rather, the trade secret owner is required to demonstrate that the concerns of misappropriation are legitimate. In most situations, this means that the trade secret owner will be required to present evidence, either direct or circumstantial, that misappropriation is likely to occur.

PDF page 182: However, in most situations, direct evidence concerning the likelihood of misappropriation does not exist. In such cases, a trade secret owner can present circumstantial evidence to demonstrate that the unauthorized use or disclosure of trade secrets is imminently threatened. Circumstantial evidence demonstrating that imminent misappropriation is likely to occur consists of two types: (1) evidence demonstrating the intent of a party to elicit the wrongful disclosure of the trade secret, and (2) evidence demonstrating that the wrongful disclosure or use of a trade secret is inevitable regardless of any party’s intentions. Evidence demonstrating the intent of the new employer to elicit trade secrets from its new employee takes many forms. Often, a trade secret owner can show that the new employer desires the trade secret and has unsuccessfully attempted to acquire the trade secret information by proper means, either from the trade xxvi secret owner, other parties, or independent derivation or reverse engineering. The new employer’s intent to misappropriate trade secrets can also be demonstrated by showing that the new employer solicited the trade secret owner’s employees and has not made any efforts to solicit employees from the industry in general. Other facts, such as access to a common supplier, access to a former consultant, or failed prior attempts to duplicate technology can also contribute to a circumstantial showing of intent. Second, in addition to circumstantial evidence demonstrating an intention to elicit improper disclosure of xxv Surgidev Corp. v. Eye Technology Inc., 648 F. Supp. 661, 695 (D. Minn. 1986), aff’d, 828 F.2d 452 (8th Cir. 1987). xxvi For example, in Convolve, Inc. v. Compaq Computer Corp., 2006 U.S. Dist. LEXIS 13848, the plaintiffs asserted that the defendants were misappropriating trade secrets in violation of a nondisclosure agreement. As evidence of this violation, the plaintiffs showed that the defendants tried unsuccessfully to reverse engineer the trade secret-protected software. That evidence, interalia, was sufficient to withstand a motion for summary judgment.

PDF page 182: However, in most situations, direct evidence concerning the likelihood of misappropriation does not exist. In such cases, a trade secret owner can present circumstantial evidence to demonstrate that the unauthorized use or disclosure of trade secrets is imminently threatened. Circumstantial evidence demonstrating that imminent misappropriation is likely to occur consists of two types: (1) evidence demonstrating the intent of a party to elicit the wrongful disclosure of the trade secret, and (2) evidence demonstrating that the wrongful disclosure or use of a trade secret is inevitable regardless of any party’s intentions. Evidence demonstrating the intent of the new employer to elicit trade secrets from its new employee takes many forms. Often, a trade secret owner can show that the new employer desires the trade secret and has unsuccessfully attempted to acquire the trade secret information by proper means, either from the trade xxvi secret owner, other parties, or independent derivation or reverse engineering. The new employer’s intent to misappropriate trade secrets can also be demonstrated by showing that the new employer solicited the trade secret owner’s employees and has not made any efforts to solicit employees from the industry in general. Other facts, such as access to a common supplier, access to a former consultant, or failed prior attempts to duplicate technology can also contribute to a circumstantial showing of intent. Second, in addition to circumstantial evidence demonstrating an intention to elicit improper disclosure of xxv Surgidev Corp. v. Eye Technology Inc., 648 F. Supp. 661, 695 (D. Minn. 1986), aff’d, 828 F.2d 452 (8th Cir. 1987). xxvi For example, in Convolve, Inc. v. Compaq Computer Corp., 2006 U.S. Dist. LEXIS 13848, the plaintiffs asserted that the defendants were misappropriating trade secrets in violation of a nondisclosure agreement. As evidence of this violation, the plaintiffs showed that the defendants tried unsuccessfully to reverse engineer the trade secret-protected software. That evidence, interalia, was sufficient to withstand a motion for summary judgment.

PDF page 183: trade secrets, a trade secret owner can show that such disclosure is inevitable by virtue of the particular circumstances of the situation. This showing is most frequently demonstrated by evidence that the work to be performed by the former employee is very similar to the work previously performed for the trade secret owner, and that the former employee will be unable to perform the new job conscientiously without revealing trade secrets previously learned.