Drafting Key Commercial and Consumer Contract Terms A Litigation Perspective Todd C. Jacobs tjacobs@bradleyriley.com October 6, 2017

Forum in which disputes will be resolved? Arbitration clauses Forum selection clauses Choice-of-law provisions

Should you have an arbitration clause? Consumer facing contracts Commercial contracts International contracts

Consumer Facing Contracts Concepcion/Italian Colors – Significantly reduces class action exposure. Do Consumers Care: Polling Equifax Impact NY Times CFPB Common Pitfalls: No affirmative assent Not conspicuous Record keeping Arbitration rules not sufficiently consumer friendly

Commercial Contracts – Arbitration Clauses Considerations: Speed, efficiency, confidentiality Appealability Quality of decision-maker

International Contracts – Arbitration Clauses Where are you doing business?

Forum Selection Clauses Opportunity to pick your hometown – favorable jury pool Uniform body of law Enforceable IP fights/Arbitration

Choice-of-Law Provisions Uniform body of law Do your research New York is a good default

Other Common Useful Provisions Integration clauses Reliance clauses Limitations on damages Limitations on warranties Time limitations Fee-shifting provisions Mediation provisions

Todd C. Jacobs Bradley Riley Jacobs PC 847-370-1837 320 W Todd C. Jacobs Bradley Riley Jacobs PC 847-370-1837 320 W. Ohio Street, 3W tjacobs@bradleyriley.com Chicago, IL 60654 Bradley & Riley PC 2007 First Ave. SE Cedar Rapids, IA 52402 Tower Place One South Gilbert Street Iowa City, IA 52240

Protecting Trade Secrets Strategies for In-House Counsel David M. Caves dcaves@bradleyriley.com October 6, 2017

Agenda for this Presentation Trade Secrets – Overview Defend Trade Secrets Act of 2016 Effective Trade Secret Protection Program

What is a Trade Secret? Information that has commercial value and that has been kept confidential. For information that qualifies, the owner has additional legal remedies to pursue against theft of the trade secret.

What is a Trade Secret? A trade secret is a formula, pattern, physical device, idea, process, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.

Examples of Trade Secrets Sales data. Customer lists. Business methods. Drawings or blueprints. Computer programs. Marketing plans. Production methods.

Advantages of Trade Secret Protection Unlimited duration. Worldwide protection (in theory). No application or registration process. Effective as soon as the information meets the definition of trade secret.

Essential Legal Requirements The information must be secret. The information must have commercial value because of its secrecy. The owner must take reasonable steps to keep it secret.

Secrecy “Not generally known . . . to persons within the circles that normally deal with this kind of information.” Matters “generally known” – Matters of common knowledge Public information

Secrecy Limited to a defined group of people. Can be shared – if secrecy is maintained.

Commercial Value The trade secret must confer an economic benefit to the owner. The economic benefit must derive from the information’s secrecy – from not being generally known. There must be a benefit beyond the value of the information itself.

How to Demonstrate Commercial Value? Economic benefits derived from use (e.g., business advantage from the information). Cost of developing the information. Licensing revenues or offers.

Reasonable Steps to Maintain Secrecy Evaluated on a case by case basis. Examples: Restrict physical access (lock it in a vault). Limit the number of people who have access. Password protection / encryption. Non-Disclosure agreements.

What Is Lawful? Reverse engineering. Independent creation.

How Are Trade Secrets Protected? Contracts: Confidentiality Agreements. Non-Disclosure Agreements. Other legal remedies: DTSA / UTSA. Tort law or unfair competition law.

Defend Trade Secrets Act of 2016 New federal law – effective May 11, 2016. Similar to existing state law (Uniform Trade Secrets Act). Two primary functions of the DTSA: Opens federal court to all trade secret owners. Aims for national uniformity.

DTSA vs. UTSA Similar definition of “trade secret.” Similar definition of “misappropriation.” Similar remedies – injunctive relief, compensatory damages, exemplary damages, potential recovery of attorney fees.

DTSA vs. UTSA DTSA provides access to federal court. DTSA provides for an ex parte seizure order available in “extraordinary circumstances.” DTSA does not allow an owner to claim “inevitable disclosure.”

Trade Secret Protection Identify trade secrets. Develop and clear and concrete protection program. Restrict Access. Policies for Employees. Policies for Third-Parties.

Identify Trade Secrets Accurate identification may be essential for enforcement.

Effective Protection Program Appoint a point person. Develop policies and procedures for employees and third-parties. Communicate policies and procedures through training. Monitor compliance.

Restrict Access Determine who needs access. Restrict physical access. Restrict electronic access. Password protection Encryption

Policies for Employees Confidentiality agreements. Handbook policies. Restrict electronic access to select employees. Training and communication.

Policies for Third Parties Non-Disclosure agreements (NDAs). Encryption. Other restricted access – password protection. Terms and conditions of restricted access.

Questions?

David M. Caves Bradley Riley Jacobs PC 319-861-8728 320 W David M. Caves Bradley Riley Jacobs PC 319-861-8728 320 W. Ohio Street, 3W dcaves@bradleyriley.com Chicago, IL 60654 Bradley & Riley PC 2007 First Ave. SE Cedar Rapids, IA 52402 Tower Place One South Gilbert Street Iowa City, IA 52240