1. A Primer on Trade Secrets Law NYSBA CLE November 20, 2014
By Andre castaybert
Castaybert pllc
Co-CHAIR Of trade secrets Subcommittee NYSBA ip section

2. Trade secrets: In the news…
Department of Justice: Two individuals and Company found guilty of conspiracy to sell trade secrets to Chinese companies – March 5, 2014
United States Senate: Senators Coons and Hatch introduce bill to combat theft of trade secrets – April 29, 2014
The Washington Post: U.S. announces first charges against foreign country for cyberspying – May 19, 2014
Global Post: EU agrees on new framework for trade secrets protection – May 26, 2014

3. Increase in legislative activity
On September 17, 2014 the House Judiciary Committee approved the Trade Secrets Protection Act of The legislation will now move to the full House of Representatives for consideration.
The Trade Secrets Protection Act of 2014 would create a federal private right of action for trade secret theft and would permit a seizure order on an ex parte basis for the preservation of evidence.

4. What is the economic impact of trade secret theft to U.S. companies?
Estimates of trade secret theft range from 1-3% of the GDP of the United States and other advanced industrial economies*
U.S. Senators Coons and Hatch: Estimate $160 to $480 billion lost to trade secrets theft in U.S. each year
*CREATe and PWC: “Economic Impact of Trade Secret Theft: A framework for companies to safegaurss trade secrets and mitigate potential threats

5. What is Trade Secrets Misappropriation Law?
Protects a firm’s interest in information that the firm has developed which is both confidential and commercially valuable.
Protects such “trade secrets” against unauthorized acquisition, use, or disclosure by others, i.e., misappropriation, even though they are neither patented or copyrighted nor patentable or copyrightable.

6. The UTSA Definition of Trade Secret
The Uniform Trade Secret Act “UTSA,” enacted by all states and the District of Columbia, except New York and Massachusetts, defines a trade secret as:
information, including a formula, pattern, compilation, program, device, method, technique, or process;
that derives independent economic value, actual or potential, from not being generally known to, or readily ascertainable through appropriate means, by other persons who might obtain economic value from its disclosure or use; and
is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

7. Trade secrets in New York
New York courts have adopted definition from Restatement of Torts Section 757 —“a trade secret consists of a formula, process, device or compilation which one uses in his business and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.”
Unlike UTSA, New York courts have held that trade secrets must usually consist of ‘‘a process or device for continuous use in the operation of business.’’
Abstract ‘‘marketing concepts,’’ ‘‘new product ideas,’’ and ‘‘business possibilities or goals’’ may not qualify for trade secret protection.

8. Trade Secrets in New York
New York follows §757 Restatement of Torts (1939) factors:
(a) the extent to which the information is known outside of [the] business;
(b) the extent to which it is known by employees and others involved in [the] business;
(c) the extent of measures taken to guard the secrecy of the information;
(d) the value of the information to [the business] and its competitors;
(e) the amount of effort or money expended in developing the information;
(f) the ease or difficulty with which the information could be properly acquired or duplicated by others.

9. Examples of Trade Secrets
R&D information
Design drawings
Production machinery
Source code
IT system architecture
Blue prints
Product designs
Manufacturing processes
Cost/price/margin data
Business plans
Market plans /research /studies/analyses
Customer lists
Customer information
Customer support services

10. Economic Value Economic value: actual or potential
Not generally knows by others who can obtain economic value for disclosure or use
Need not be novel

11. What constitutes misappropriation?
Wrongful acquisition, retention, or use
Wrongful disclosure of specifically identified information:
That has actual or potential economic value;
Is not generally known to the relevant public;
And that has been the subject of reasonable measures to maintain secrecy.

12. Wrongful acquisition?
The trade secret owner must show that the alleged misappropriator :
(a) acquired the trade secret knowing or having reason to know it was acquired by “improper means”; or
(b) used or disclosed the trade secret without consent and used “improper means” to acquire the trade secret ; or
(c) acquired the trade secret from a third person and knew of or should have known that the trade secret was either obtained by the third person by “improper means” or the third person was under a duty to keep it secret.

13. Defenses to Trade Secrets Misappropriation Generally
Competitor had previously used the matter in question in its business
Defendant had already been using the information
The information had been widely circulated or published before the alleged misappropriation
The information can be readily obtained from public sources

14. Reasonable Precautions
Fact intensive / case by case
Efforts to label
Efforts to secure and maintain security
Limited distribution: vaults, passwords, codes
Employee training and reminders
NDAs
Confidentiality agreements
Noncompetes

15. Improper Means Theft or breaking and entering Bribery
False identity or misrepresentation
Espionage
Computer fraud or hacking/ improper access
Wrongful taking
Removed from trash

16. The Computer Fraud and Abuse Act (CFAA)
Enacted in 1986 as an amendment to existing computer fraud to clarify and increase the scope of the previous version while limiting federal jurisdiction to cases "with a compelling federal interest-i.e., where computers of the federal government or certain financial institutions are involved or where the crime itself is interstate in nature." (see "Protected Computer", below).
CFAA also criminalized additional computer-related acts. Provisions addressed the distribution of malicious code and denial of service attacks.
Congress also included in the CFAA a provision criminalizing trafficking in passwords and similar items.
To have the best chance of seeking remedies under the CFAA, only give employees access to company networks on a need-to-know basis.

17. Acquisition by Memory Not a Defense
Employer does not lose protection when employee reconstitutes information from memory

18. Acquisition by Accident
Person receiving information knows or has reason to know that the information was a trade secret
Defeated if accident caused by failure of trade secret owner to employ reasonable efforts to maintain secrecy

19. Unauthorized Use
Breach of obligation not to use trade secret arising from agreement not to disclose
Confidential relationship
Employer – employee
Licensor – licensee
Potential buyer
Manufacturer or independent contractor
Submitted bid

20. Proof of Acquisition and Use
Direct
s and voice mails
Circumstantial showing access and product has similar features or results
Timing
Shift in business strategy
Spoliation of evidence/ evidence of cover up

21. Preliminary and Permanent Injunctive Relief
The threat of misappropriation may be sufficient to obtain an injunction, even before use.
Need to meet the requirements for an injunction.
Likelihood of success on the merits
Irreparable harm
Balance of equities in favor of plaintiff / clean hands
The misappropriator cannot base a request to terminate the injunction based on improper publication of the trade secrets
Injunctive relief after trial to remove “lead time advantage”

22. Inevitable Disclosure
Pepsico vs. Redmond 7th Circuit decision in 1995 enjoined a former employee of Pepsico from working with a competitor for six months, even though there was no evidence the former employee intended to use or disclose trade secrets to the new employer, and was not bound by a noncompete.
The doctrine is disfavored in New York, which as a matter of public policy construes noncompete obligations narrowly.
In such case, the pertinent factors in favor of the application of the doctrine include
The involvement of direct competitors
The employee would perform the identical job
The trade secret is well established
The trade secret is highly valuable to each of the competitors

23. Remedies: Monetary Damages
Lost profits
Loss of revenue
Price erosion
Cost of efforts to minimize consequences of theft
Unjust enrichment: disgorgement of unjust gains
Reasonable royalty

24. Additional Remedies
Punitive damages and attorney’s fees to prevailing party potentially available under UTSA
Potential criminal remedies
18 U.S.C.§1832 Theft of Trade Secrets
Fined and/or imprisoned up to 10 years
Economic Espionage Act (1996)
Provides criminal penalties for misappropriation of trade secrets “related to or included in a product that is produced for or placed into interstate commerce”
Foreign and Economic Espionage Penalty Enhancement Act of 2012
Greater penalties if misappropriation is to benefit foreign government
Maximum fine for individual perpetrator increased from $500,000 to $5 million
Maximum fine for organizations is changed from $10 million to “the greater of $10 million or 3 times the value of the trade secret to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided”
Under the Tariff Act, Section 337, prohibition on import of goods made through misappropriation

25. Criminal penalties 18 U.S.C.§1832 Theft of Trade Secrets
Fined and/or imprisoned up to 10 years
Economic Espionage Act (1996)
Provides criminal penalties for misappropriation of trade secrets “related to or included in a product that is produced for or placed into interstate commerce”
Foreign and Economic Espionage Penalty Enhancement Act of 2012
Greater penalties if misappropriation is to benefit foreign government
Maximum fine for individual perpetrator increased from $500,000 to $5 million
Maximum fine for organizations is changed from $10 million to “the greater of $10 million or 3 times the value of the trade secret to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided”

26. How should a potential trade secrets plaintiff proceed before litigation?
While a trade secrets plaintiff can’t know everything at the start of suit, it must consider how to find out and investigate and re-evaluate the facts thoroughly at each step of the case
Document the objective reasons for suspicion
Work to rule out alternative explanations
See and carefully evaluate the results of appropriate discovery regarding wrongful acquisition, use, and/or disclosure

27. Defenses: Independent Development
Independent development is a complete defense. Best strategy is to show that defendant only used its own or public information. The key advantages of an independent-development defense are
(1) it does not matter how the plaintiff defines its trade secrets, and
(2) the defendant controls the evidence. If a company can show it never used any of the plaintiff’s information, then it does not matter how the plaintiff defines its secrets.
If defendant can show that it completed its development before the alleged misappropriation, then the defendant has an easier time showing it misappropriated nothing from plaintiff.

28. Defenses: Publicly Available Information
Because one cannot claim as its trade secret information that is already in the public domain, a defendant should look for public documents that show that the trade secrets the plaintiff identifies are actually not secret at all.
Although this defense depends on a trade-secret definition from plaintiff, a defendant does not have to rely on the plaintiff's documents for this defense.
This strategy especially effective if the court requires the plaintiff to define its trade secrets early in the case.

29. Defenses: Reverse Engineering
Information which is “readily ascertainable” through reverse engineering or inspection cannot meet the secrecy element.
Whether the information is “readily ascertainable” may depend on the extent of the effort required.

30. Defenses: Failure to Keep Information Secret
Another defense is to show that the plaintiff did not take proper efforts to keep the information secret.
For example, if the plaintiff gave the alleged secrets to someone who was not required to keep the information secret, or if the plaintiff allowed persons to get the information without restriction, it has not properly protected the information.
Companies have lost trade secret cases for any number of reasons:  
By including the information in published patent applications. By failing to instruct their employees to keep the information secret, and allowing the employee to share it outside the company. 
By sending the information to customers, suppliers, or co-developers without any NDA.

31. Protecting Trade Secrets
Limit access to trade secret materials on a need-to-know basis. A locked filing cabinet with limited key access is sufficient.
Create secure passwords for computer-stored trade secret information.
Consider shredding (rather than throwing away) documents containing trade secrets.
Obliterate or wipe clean (rather than merely deleting) any trade secret information contained on computer hard drives.

32. Protecting Trade Secrets
Require all employees with access to confidential company information to sign confidentiality agreements.
Have clear written policies that leave no doubt that any access and use of company information, for purposes other than company business is strictly prohibited and have employees acknowledge receiving copies.
Send out regular reminders of the policies and require acknowledgment of receipt.
Beware: Under many federal and state laws, employees have privacy rights in their personal information, even if it is stored on company computers.

33. Protecting Trade Secrets
Companies should safeguard proprietary information by:
conducting entrance and exit interviews with employees;
educating managers and HR sources professionals regarding the company-owned items that employees must return upon departure;
transparently communicating the company’s policies regarding the monitoring of employees’ electronic devices and communications to employees;
disabling employees’ access to company and computer networks at the time of departure;
creating a culture of compliance and confidentiality where employees recognize the value of protecting trade secrets; and
sharing best practices within their industries to protect valuable business data.

34. Practical Measures BYOD Policies
In light of identified risks to trade secrets portfolio, implement BYOD policy or require employees to use company-issued devices?
Different policies for different levels of employees?
If adopt BYOD policy:
Specify which devices are permitted
Provide clear restrictions regarding use and transfer of company data
Explain when company gets access to device and data
Incorporate into exit interview process
Explain investigation, incident remote wiping procedures
Address personal data/privacy concerns consistent with applicable law

35. Practical Measures Exit Interviews
Identify the trade secret and confidential information the employee accessed/used.
Question the departing employee:
Ask employee why he is leaving
Ask employee what his new position will be
Check employee’s computer activities and work activities in advance of the meeting.
Ensure that all Company property, hardware, and devices have been returned, including and cloud data, and social media accounts.

36. Practical Measures Exit Interviews
Ensure that arrangements are made to have all company data removed from any personal devices.
Disable access to company computer networks.
Make sure to obtain user names and passwords for all company social media accounts.
Inform the employee of continuing obligation under agreements with the Company.
Consider letter to new employer and employee with reminder of continuing obligations.
Consider having departing employee’s s preserved and electronic devices forensically images as appropriate.
Consider using an exit interview certification.

37. Practical Measures Post-Termination Investigation
Interview employee’s co-workers; gauge whether employees are hearing about employee in the marketplace.
Examine employee’s activity.
Conduct a forensic investigation of employee’s computer activities.
Examine and analyze badge records and access logs.
Examine phone records.
Check employee’s social media accounts as appropriate.

38. Covenants Not to Compete

39. Noncompete Prohibits employee from working for a competing company
Require all employees who have access to key trade secrets to sign a noncompete
To enforce the employer needs to show a protectable interest:
Access to a trade secret
Close relations with customers
Unique or extraordinary services

40. Reasonable Scope of Noncompete
Territory
Duration
Nature of activity
Overall reasonableness: blue pencil

41. Other Suggested Provisions
Anti-solicitation and no-hire
Choice of law and jurisdiction
Possibly arbitration
Cause of termination
Liquidated damages

42. Prepared by Andre Castaybert Esq.
CASTAYBERT PLLC
830 Third Avenue, 5th floor
New York, N.Y
If you would like a copy of this presentation, please Andre at: