Trade Secrets

Mine Your Own Business: Multinational Mining Company Seeks Protection of Alleged Trade Secrets During Discovery

Last week, multinational mining giant Rio Tinto asked a federal court in Manhattan to shield its document disclosures to the Securities and Exchange Commission (SEC) from the public eye. Unlike the typical cases we discuss involving former employees working for competitors, Rio Tinto is defending against fraud claims brought by the SEC that implicated the company and two of its former top executives. READ MORE

Automation of Our Auto Nation: New Tech Requires a New Look at Trade Secret Laws

Self-driving cars—once a thing of the future—are now becoming a reality. And, as with any new technology, there is a learning curve. Once consumers are able to test out new products, they adapt, preferences change, and what once seemed absurd or over-the-top becomes commonplace. Manufacturers then face perhaps an even steeper learning curve, trying to stay one step ahead of what the public will demand—and two steps ahead of the competition. READ MORE

David Nosal Raises Unusual Fairness Argument in Yet Another Attempt to Avoid 366-Day Prison Sentence

Just over four years ago, in January 2014, a court sentenced former Korn/Ferry regional director David Nosal to one year and one day in prison for violations of the federal Computer Fraud and Abuse Act and the Espionage Act.  Nosal appealed the sentence, but his appeals ultimately failed: the U.S. Court of Appeals for the Ninth Circuit upheld Nosal’s sentence, and the U.S. Supreme Court denied review of the case.  Luckily for Nosal, his 2014 motion for release pending appeal was granted, so he has not served any time during the four years of appeals. READ MORE

Rising Tensions as Trump Administration Prepares to Announce Results of Section 301 Trade Investigation into China’s Alleged Intellectual Property Rights Violations

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

Making a Federal Case Out of It: What Does the DTSA’s “Interstate Commerce” Limitation Mean?

We’ve blogged a lot about the Defend Trade Secrets Act in the roughly year-and-a-half period since the law was enacted.  Our coverage has run the gamut:  from the first jury verdict under the DTSA, to the U.S. Patent and Trademark Office’s emerging interest in trade secrets, to the once-controversial ex parte seizure provision that, so far, has been used very little in practice. READ MORE

Trade Secrets and Start-Ups: What to Do When Secrets Walk Out the Front Door

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

Pushing the Envelope: Eight Circuit Seals the Fate of Envelope Company’s Trade Secret Claims

On December 8, 2017, the Eighth Circuit rejected trade secrets and other claims related to allegedly stolen customer lists.  Applying Missouri state law, the federal appellate court continued the Show-Me State’s tradition of looking at customer list trade secrets with a jaundiced eye. READ MORE

THANKSGIVING EDITION: Looking Back at Turkey Trade Secrets in the US and Understanding Employer Remedies in the UK

As our United States readers prepare for the holiday weekend, we look back to a post from the archives where we dished about franchise relationships gone awry and a trade secrets dispute over turkey sandwiches.  The takeaway:  Savvy franchisors should consider revisiting their agreements with an eye toward gaining admissions from franchisees that certain materials constitute trade secrets.

And while our readers in the rest of the world wrap up the work week, companies in the United Kingdom may have a reason to be thankful.  As our colleagues over at the Employment Law and Litigation blog discuss, a recent High Court decision granted an order allowing an employer to image a departing employee’s computer to see if it contained confidential information.

This post is a good read not only for those in the UK but for any company interested in protecting its trade secrets and confidential information.  For example, the post includes this tip, which has fairly broad impact:  You will be more likely to persuade a court to rule in your favor if you offer limitations and controls in the carrying out of a forensic search of a computer or other device.

Juicing Up Your Policies: How To Protect Your Trade Secrets

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.


Bread Company Litigation Over “Grandma’s Recipe” Ends With $2.1 Million Trade Secrets Verdict

On October 6, 2017, a federal jury in Utah entered a $2.1 million trade secret verdict in favor of Bimbo Bakeries USA.  Following a trial that wrapped up more than four years of litigation, the jury concluded that defendant Leland Sycamore knowingly used the trade secret recipe for Grandma Sycamore’s bread in the production of rival Grandma Emilie’s bread for defendant US Bakery, despite the fact that he had previously sold the rights to Grandma Sycamore’s to Bimbo.

Bimbo filed suit in 2013, alleging that US Bakery had hired Sycamore to produce a new version of Grandma Emilie’s bread that relied on Bimbo’s trade secret method and used confusingly similar packaging to sell the bread to consumers.

Back in 1998, Sycamore sold the Grandma Sycamore’s brand, which had been in his family since the 1970s, to a predecessor of Bimbo.  As part of this deal, Sycamore agreed to maintain the confidentiality of all associated manufacturing and assembly procedures, recipes and trade secrets.

Other than the fact that jury verdicts in trade secrets cases (or in any case, for that matter) are relatively rare, this case is notable for two reasons.

First, it explains what might qualify as a trade secret in the culinary arena, providing clarity in an area that, as we’ve observed, has long been plagued by confusion over what combination of IP protections and contractual agreements will protect valuable recipes.  Applying Utah’s enactment of the Uniform Trade Secrets Act, the court denied the defendants’ motion for summary judgment, noting that, even if Bimbo’s purported trade secret contained known elements, Bimbo could establish a trade secret by showing that its compilation of known elements was “outside the general knowledge and not ascertainable by proper means.”

Second, this case is an interesting reminder that even though a secret process might originate within a business, that same business may face legal risks down the road for using the process if it has been licensed or sold to a third party with the appropriate safeguards to ensure confidentiality and the third party’s right to use the process.