Guardians of the IP Law Galaxy: What Employment Lawyers Need to Know Howard L. Steele, Jr., Steele Law Group Penthouse, One Allen Center, Houston, Texas

What’s “IP” (Intellectual Property) Anyways? Brain Power Employer’s value often is based on their employees Trade Secrets (e.g., formula to Coke, marketing plans, or customer lists) Copyright Patent Trademark

Happy Early Cinco De Mayo Defense of Trade Secrets Act most significant expansion of federal IP law in 70 years Passed Congress almost unanimously Amends criminal Economic Espionage Act to add civil claim Obama to sign this week probably Provides a federal cause of action and business certainty

Harmonizing Trade Secret Law Slightly changed the definition of trade secret (public v. “persons who can obtain economic value from its disclosure or use.”) More like UTSA Federal 3 yr statute of limitations Allows seizure in “extraordinary circumstances.” Stamps out “inevitable disclosure” to the extent it prevents “a person from entering an employment relationship” and not based just “on what information the person knows.” Whistleblower Protection

Putting on the “white hat” Inoculation Property Electronic stuff (sequester) Two ways your client gets sued Get everything your client ever signed Make scripts for interaction (stay consistent) Multi-party cases (guilt by association)

Whistleblowers NDA, can I say anything? Gov’t Lawsuits Parties and counsel safe harbor New NDA requirements (notice of law must be printed prominently) Can be “secret” and “without notice.” If you want protection, hire a noncompete lawyer

An owner of a trade secret that is misappropriated my bring a civil action under this subsection if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce. 18 USC 1836(b). Central Provision

Defining a Trade Secret “all forms and types” of virtually everything at an employer if: Reasonable measure to keep secret Derives independent economic value because of that But, probably doesn’t include the memory test

Misappropriation Without permission Obtaining a trade secret through improper means Use Disclosure Improper use is “black hat” facts Not reverse engineering (or independent recreation probably)

Remedies Injunction “as reasonable” If “inequitable” then court can order reasonable royalty Actual loss of the trade secret value AND Any unjust enrichment not compensated in loss; 0R Reasonable Royalty Attorney’s fees if

What to do with outgoing employees Does not preempt Texas law (or others) on the limitations of an injunction, BUT does not prevent damage action Setting up a battlefield argument between state and federal cases

Copyright Second biggest employer issue in “information world” All content on the Internet, work done for the Employer that is not secret Must be fixed (not just brain power) Don’t need the symbol to be copyrighted, authooma

Assignment “Employee HEREBY ASSIGNS to Employer all rights, title, and interest in and to all works of authorship that Employee creates while in the employee of Employer and in and to all copyrights in such works of authorship.”

Copyright Remedies If copy and “substantially similar”: Injunction Actual damages and profits of bad actor Or statutory damages (not less than $750, nor more than $30,000 for each work infringed If willful, statutory can go up to $150,000 If no reason to believe infringing, Court can reduce to $200

Fair Use Purpose of the use (criticism, comment, news, teaching, scholarship, or research) Nature of original work Amout of use Effect on company that is infringed

Patent You need an assignment and IP counsel

Trademarks Old employees trying to get a free ride off your name or trade dress

Guardians of the IP Law Galaxy: What Employment Lawyers Need to Know Howard L. Steele, Jr., Steele Law Group Penthouse, One Allen Center, Houston, Texas