As we previously reported, on August 14, 2017, President Trump signed an executive memo asking U.S. Trade Representative Robert Lighthizer to determine whether to launch an investigation into China’s alleged theft of intellectual property under Section 301 of the Trade Act of 1974. Later that week, after a review of Chinese laws, policies, and practices relating to IP, Lighthizer recommended and launched an investigation “to determine whether acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation are unreasonable or discriminatory and burden or restrict U.S. commerce.” READ MORE
Cathy Lui concentrates on trade secrets litigation, representing both plaintiffs and defendants in the tech, financial services, and retail industries. Cathy has a particular focus on obtaining and defending against temporary restraining orders and preliminary injunctions under exigent circumstances in fast-paced trade secret actions.
Her practice also includes trade secrets counseling and investigations on joint ventures, third-party vendor relationships, and emerging technology to help minimize the risk to companies. Bloomberg recently quoted Cathy regarding the risk on joint ventures. Cathy has significant experience in actions arising from the Defend Trade Secrets Act (DTSA), which created the first federal civil misappropriation of trade secrets claim in May 2016. Cathy has helped shape DTSA law on behalf of her clients through her involvement in some of the earliest DTSA litigation. Many of her trade secrets cases involve parallel criminal proceedings. For her achievements, Legal 500 recognized Cathy as a "Next Generation Partner" in trade secrets in 2019 and 2020. The National Asian Pacific American Bar Association also recently honored Cathy as a 2019 Best Lawyer Under 40. This annual list recognizes individuals within the APA community who have achieved prominence or distinction in their field and demonstrated a strong commitment to the APA community or civic affairs.
Cathy also engages in complex commercial litigation including employee mobility, breach of contract, and fraud cases. Her matters are often high-profile and industry-changing. She is currently representing Netflix in a novel employee mobility matter related to the use of fixed-term personal agreements with business executives; the matter is closely watched by the Hollywood and tech industries.
Cathy is an editor and contributing author of Orrick's trade secrets blog, Trade Secrets Watch, and regularly speaks and writes about trade secrets issues. Cathy currently serves as the Co-Vice Chair of the Trade Secrets Interest Group of the California Lawyers Association's (formerly of the California State Bar) Intellectual Property Section.
Cathy is very active within the firm and her community. Cathy currently serves as the Hiring Partner for the San Francisco office. In addition, she is very involved in diversity and inclusion initiatives. Orrick selected Cathy to serve as the firm's 2020 Fellow for the Leadership Council on Legal Diversity and as a firm ambassador for an innovative diversity and inclusion initiative called Move the Needle. Cathy also co-led the Firm's Asian Pacific Attorneys Affinity Group for over three years and remains an active participant and mentor in the Affinity Group. In addition, Cathy previously served as the Co-Chair of the Asian American Bar Association's Judiciary Committee and continues to serve on the Judiciary Committee, which helps advance representation the bench.
Cathy also maintains an active pro bono practice. Cathy's dedication to pro bono service was demonstrated by her work in an asylum merits hearing representing a Salvadoran religious activist persecuted by gangs in El Salvador. For her work on this matter, the Lawyers Committee for Civil Rights honored Cathy with the Father Cuchulain Moriarity Award. In addition, the Justice & Diversity Center of the Bar Association of San Francisco recognized Cathy as an Outstanding Volunteer in Public Service in 2014 through 2018 for her work with helping homeless clients remove outstanding warrants barring them from access to housing and employment.
Posts by: Catherine Y. Lui
Start-ups often face a complex relationship with their trade secrets. Many of the strengths of early stage start-ups, such as collaborative work among a small number of business partners and open access to proprietary information by all team members, can obfuscate clear ownership rights and confidentiality obligations concerning trade secrets. The first employees of a company will also often feel a strong sense of ownership over his work, which can sometimes lead to the employee considering work developed for the company as his property, rather than the company’s. While proprietary information is often the lifeblood of the business, it can be expensive for young companies to protect. However, there are a number of inexpensive and overlooked best practices that can safeguard trade secrets without slowing down productivity or altering the company’s culture. READ MORE
Recently, popular Southern California juice and aguas frescas chain Green Crush filed suit against up-and-coming rival juice bar Paradise Splash and several individuals. The lawsuit, filed in the U.S. District Court for the Central District of California, alleges 16 claims including misappropriation of trade secrets, trademark infringement, and breach of contract.
For trade secret owners, international IP theft is of particular concern because of the difficulty in catching and enforcing remedies against the thieves. For many U.S. companies with a global reach, an overriding concern has been how to combat economic espionage from Chinese state-owned companies or individuals. During his campaign, President Trump certainly had China on his mind. READ MORE
The Waymo v. Uber trade secrets litigation has been underway for less than two months but the case has already hit quite few speed bumps with multiple discovery battles, Waymo’s efforts to obtain a preliminary injunction from Judge William Alsup of Northern District of California, a fight over arbitration, assertions of 5th Amendment rights, and now an appeal to the Federal Circuit that has temporarily halted a portion of the district court proceedings.
As a quick recap of how we got here, Waymo alleges that one of its former key managers in charge of Waymo’s driverless car business, Anthony Levandowski, downloaded more than 14,000 files to start a competing company—Otto—that Uber later purchased. The key technology relates to a LiDAR system, which is mounted on top of the car and gives the driverless car the ability to “see” other cars and obstacles. Waymo is seeking a preliminary injunction enjoining Uber from using or disclosing any of Waymo’s trade secrets and from selling any devices based on Waymo’s patents. In aid of the PI hearing on May 3, 2017, the parties are engaging in expedited discovery. Since this case started, the docket has been quite active and full of interesting, thorny legal issues. READ MORE
With all the hubbub over the Presidential election, it would not be hard to overlook some of the Obama administration’s final moves. Recently, the White House issued a call to action to state legislators to ban non-compete agreements for most classes of workers. In an era where even sandwich makers can be bound to a non-compete agreement, the White House is concerned about the overuse of non-compete agreements and the potential stifling effect of these agreements across the economy. According to the White House, 20 percent of U.S. workers are bound by non-compete agreements, including 14 percent of those earning less than $40,000 per year. READ MORE
Expectations didn’t appear high for the latest round of China-U.S. talks about a variety of economic issues including trade secret protection. As previously discussed at TSW, China had not signed onto the Trans-Pacific Partnership Agreement, and earlier this summer, the U.S. had threatened economic sanctions against China for lax cybersecurity enforcement. READ MORE
We rely on the federal government for a lot of things, but helping a corporation recover attorney’s fees is not something that immediately comes to mind. With a recent federal court opinion in the Northern District of California that made executive search firm Korn/Ferry International $827,983.25 richer (although the order likely will be appealed), more corporations may think about getting an assist from federal prosecutors in trade secret actions, rather than taking on the burden themselves in civil litigation. READ MORE
State court or federal court? If the Defend Trade Secrets Act of 2014 (DTSA) (S. 2267, introduced on April 29, 2014) becomes law, then trade secrets plaintiffs—not just those who can maintain diversity jurisdiction—could proceed in federal court under new federal law. But would they want to? While the knee-jerk reaction of many litigants is a resounding “Yes!,” we wonder whether federal court under the DTSA would be preferable to the well-known Uniform Trade Secrets Act (UTSA), which is available in forty-eight of the fifty states.
Let’s first look at where DTSA and the UTSA appear the same or similar. Both statutes provide nearly identical definitions of trade secrets and misappropriation. Both also offer similar remedies for injunctive relief, actual damages, unjust enrichment, reasonable royalties, punitive damages, and attorneys’ fees. READ MORE
When you think of gyms, romance, and reality TV, what’s most likely to come to mind is an episode of Jersey Shore — not a lawsuit for trade secret misappropriation. But you won’t hear about JWoww, Snooki, or The Situation in three recently-filed trade secret complaints. These complaints reflect a growing trend in which trade secret cases aren’t limited to traditional spheres like corporate espionage or technical secrets like source code, but instead are based on creative trade secret assertions that go after competitors in unique settings. READ MORE