Trade Secrets |
|
Course No. 9200-704 (and 804)-801 ID No. 16545 |
MW 3:00 - 4:30 p.m.
|
Room L-134
|
|
|
Room 231D (IP Alcove)
|
(330) 972-7972
|
dratler@uakron.edu
|
|
| Copyright © 2000, 2002, 2003, 2006, 2008 Jay Dratler, Jr. For permission, see CMI. |
Overview |
Trade secrets remain a forgotten corner of intellectual property law. Comprehensive federal statutes govern the major fields of intellectual property, namely, patents, copyrights, and trademarks. In contrast, trade secrets arose and still exist at common law. The Economic Espionage Act of 1996 criminalized certain acts of trade secret misappropriation at the federal level, but trade secret law is still state law insofar as civil claims are concerned. Over half the states, including Ohio, now have adopted the Uniform Trade Secrets Act. Yet this statute was designed to codify the common law, not curtail its development. As a result, trade secret litigation still follows the common-law tradition of case-by-case, fact-specific development much more than litigation in other fields of intellectual property. Trade secrets are also unique in another respect. Their protection requires no application or government grant and can be accomplished with little preparation. In contrast, patents are government grants issued only upon detailed application, full trademark protection requires federal registration, and federal registration of copyrights is a prerequisite to suing for infringement of copyright in any work of United States origin. These facts have two important ramifications. First, because state law governs trade secrets and develops largely on a case-by-case basis, trade secrets are generally more flexible than patents, copyrights, or trademarks. The second point follows from the first: because trade-secret law is more flexible, it offers greater opportunities for creative lawyering than most other fields of intellectual property law. The many relevant doctrinal angles and conflicting policies make trade secret law, like unfair competition law, a fertile field for creative legal argument. A good lawyer with a sound knowledge of relevant precedent sometimes can protect a trade secret although its owner knew nothing of the law and took little care to protect it. Conversely, a good lawyer may defeat a trade secret claim that, although attractive at first glance, is missing necessary elements or appears to contravene relevant policies. Although trade secrets are often associated with "high technology," including the results of research and development prior to filing a patent application, nothing in the law limits them to technology. Recipes, business methods, and customer lists can be trade secrets, and the law explicitly contemplates business, financial, product, and marketing information. There is no requirement that trade secrets be "high tech"; any business may have them. One last point of background is worth mentioning. Firms often use trade secret protection in attempts to curtail competition by former employees and others. Therefore the law of trade secrets has a close relationship with the laws and policies (including antitrust law) governing competition and employee mobility. We will explore this relationship and see how the law of trade secrets affects the enforceability of covenants not to disclose, covenants not to solicit former clients, and covenants not to compete. |
Back to Top |
Course Content |
| This course covers trade secrets in the depth appropriate for patent attorneys and others who plan to represent businesses with important secrets. We begin with an overview of three key issues: the existence of a trade secret, its misappropriation, and remedies for its misappropriation. After this brief introduction, we explore those issues and others in depth. We first study the three elements of trade secrecy: limited availability, economic value, and reasonable efforts to protect the secret. Then we apply them to such problematic subject matter as customer lists and computer software. We next explore misappropriation, including the key concept of improper means, the exceptions for independent development and reverse engineering, defenses, third-party misappropriation, and threatened misappropriation. Next we examine remedies for misappropriation, including the head-start injunction, permanent injunctions, damages, and augmented and punitive damages. After exploring the nature and fundamental doctrines of trade secret law, we turn to the relationship between trade secrets and other fields of statutory and common law. We first examine the important relationship between patents and trade secrets, including patent pre-emption, the requirement for an election between patent and trade secret protection, and the implication of that election for licensing. We also discuss the relationship between trade secret law and contracts more generally, including noncompetition and nonsolicitation covenants. The course ends with a discussion of some important factors in trade-secret litigation, including protective orders and the effect of federal criminal sanctions under the Economic Espionage Act of 1996. |
Back to Top |
Course Goals |
|
This course has three main goals. First, it seeks to impart a
thorough substantive knowledge of trade secret law, including the Uniform
Trade Secrets Act, the Restatements, and seminal cases. Second,
and perhaps more important, it seeks to convey an understanding of the
conflicting policies underlying the legal doctrines, thereby providing
a basis for understanding the law's development and grist for arguments
to expand or modify the law. Finally, by discussing the relationship of trade secrets with other branches of law, the course seeks to impart a practical knowledge of how trade secrets and related litigation fit in the framework of intellectual property law and business law in general. The hope is that, having taken this course, you will have fluency in both advising clients how to protect their important business information and in structuring litigation to take the best advantage of this unique field of law. |
Back to Top |
Course Prerequisites |
This course is an "advanced" course in ntellectual property. Before (or while) taking it, you should have some exposure to the study of intellectual property. You may have taken, or may take concurrently, the introductory course in intellectual property or a course in trademarks and unfair competition, copyright, or patents. If you have not taken any such course and are not taking one concurrently, please see me to discuss whether you should take this course now. There are also two prerequisites of a technical nature. First, you must have ready access to a personal computer with electronic-mail and Web-browsing capability. If you do not own a personal computer, you must arrange to use one of the Library's computers. Second, you must know how to use at least one electronic mail program and at least one Web browser (Firefox, Netscape Navigator, Apple Safari, or Microsoft Explorer). You must know how to receive, prepare and send e-mail "attachments," including word-processing files, and you must know generally how to "surf the Web," at least to the extent of retrieving, saving, and printing material from the Websites you have visited. Whatever your level of skill, you should check your electronic mail several times each week for mail relating to this course. You should also check your electronic mail and this Website a few days before classes begin to receive your first assignment, and at least two days before each class to receive your reading assignment for that class. |
Back to Top |
Study Groups |
| Because this course is conceptually challenging and involves complex material, I strongly urge those who have study groups to maintain them, and those who do not to consider forming them, either in general or specially for this course. No one (even your professor!) sees all of the angles, all of the time, in complex legal situations. Therefore having a regular "sounding board" and "reality check" among your peers can improve your understanding, as well as increase your confidence in yourself and your enjoyment of the course. |
Back to Top |
Reading Material |
|
There is no required text for this course, as most readings will be
posted on this Website. Unless you plan to study from your laptop,
you should print out each assignment and bring it to class with you. Although statutory reading material also will be provided on line, I recommend that you bring to class any compendmium of intellectual property statutes that you may have bought for a course taken previously or concurrently. My favorite is Paul Goldstein and Edmund W. Kitch, Selected Statutes and International Agreements on Unfair Competition, Trademark, Copyright and Patent, (2007 ed., Foundation Press). There are several equivalent commercial publications. These books contain not only the trade secret statutes, to which we will frequently refer, but also the black letter of the Restatement and the most important statutes from other fields of intellectual property, as well as governing treaties and international agreements. We will refer to these materials for purposes of comparison and better understanding of context. Please bring your reading materials and your statutory compendium with you to class every day. |
| Back to Top |