Questions and Notes on Wexler v. Greenberg and
B. F. Goodrich
Co. v. Wohlgemuth
1. What was the main issue in Wexler and Wohlgemuth?
Was it whether trade secrets existed, or whether they were misappropriated?
In each case, on what facts and legal doctrine does resolution of
that issue depend?
2. Are the two cases reconcilable, or was one wrongly decided?
Both Wexler and Wohlgemuth wanted to improve their position in life,
didn't they? Didn't both take what opportunities were offered them?
What specific facts, if any, were responsible for the court reversing
the injunction in Wexler and granting a broad injunction in Wohlgemuth?
3. What about the "smell test"? Did what the defendants
did in both cases smell the same? Were there any odoriferous facts
or testimony in either case that might have influenced the court?
4. Apart from the smell test, do the results in the two cases make
economic sense? Weren't roughly the same countervailing economic
policies at work in both cases? If so, then why the different results?
In balancing the policies, did one court weigh some policies more
heavily than the other court did? If so, what policies? Did
the facts of the cases justify the weights that each court put on the
particular policies that it stressed?
5. Some courts and commentators refer to cases like Wohlgemuth
as "inevitable disclosure" cases. To see why, consider
what might have happened if Wohlgemuth actually had gone to work for International
Latex. Over the long run, could he have kept himself from using
trade-secret information acquired at B.F. Goodrich, perhaps unconsiously,
even if acting in the utmost good faith? As you think about this
question, consider the large number of trade secrets to which he had access
in his various positions at B.F. Goodrich and the competitive pressure
that he would face in his new job.
"Inevitable disclosure" cases like this are among the few in
which courts will grant broad permanent injunctive relief, without
any time limit. Was such relief appropriate in this case? What
are the economic policies for and against it? Was it fair to Wolhgemuth
under the circumstances? Would a time-limited injunction have been
fair to B.F. Goodrich, in light of the longevity and productivity of its
research in the space-suit field?
6. Could the chemical formulas that Greenberg developed at Buckingham
still be trade secrets? If so, who owns the trade secrets? Suppose
a third party, C, steals the formulas from a safe in Brite's office. Would
Brite have an action for misappropriation against C? Would Greenberg?
Would Buckingham? Suppose C steals the foruulas from a safe
in Buckingham's office. Would Buckingham has a cause of action
for misappropriation against C? Would Greenberg? Would Brite?
What is the best was to do justice in this situation, to apportion
ownership of the trade secrets, or to limit the persons who can sue for
7. Wexler is the first case we have studied that contains
a serious and extended discussion of the policies underlying legal protection
of trade secrets. Are those policies limited to cases of alleged
misappropriation by former employees, or are they more general?
Make two lists of economic and social policiesthose that favor the
plaintiff, and those that favor the defendant. As you read the cases
in this course, add to both lists. Is there more to the polices
underlying trade-secret protection than just encouraging innovation and
promoting commercial morality?