FALL 2010

Trade Secrets


Course No. 9200-704 (& 804)-801

ID No. 85737 & 85736

Time:  W 6:30 - 9:30 p.m.
Room:  W-215
Professor Jay Dratler, Jr.
Room Across from 231D (IP Alcove)
Home: 330-835-4537
Copyright © 2000, 2002, 2003, 2006, 2008, 2010   Jay Dratler, Jr.   For permission, see CMI.

Questions and Notes on Ohio Uniform Trade Secrets Act

1.  Ohio's version of the Uniform Trade Secrets Act is a nonstandard variation.  Among the points of variation are: (a) different organization of, and slightly different language in, the definition of "misappropriation" (apparently an attempt to simplify the structure and clarify the meaning of the uniform language), see § 1333.61(B); (b) a more complete list of examples in the preamble to the definition of "trade secret," see § 1333.61(D)(preamble); (c) an apparent mandate (rather than just a suggestion) that courts provide a remedy that will eliminate wrongful commercial advantage even after a trade secret has ceased to exist, see § 1333.62(A); (d) a requirement that "reasonable royalty" damages be equitable, and a mention of two factors to be considered in fiixing them, see § 1333.63(A); (e) a clarifying reference to "punitive or exemplary" damages, instead of just "exemplary" damages, see § 1333.63(B); and (f) a four-year, rather than a three-year, limitations period for actions, see § 1333.66.  There are other variations as well, but they appear to be intended to clarify and simplify the uniform language, not to change it.

2.  In every field of intellectual property, two fundamental questions arise before liability can be found.  First, does the alleged item of intellectual property exist, i.e., is it valid?  Second, if so, has the valid intellectual property been infringed?  Only if both questions are answered in the affirmative is there liability, and only then does the question of remedies arise.

The same two conceptual questions exist in trade secret law, but the terminology is different.  In trade secret law, the first substantive question is whether a trade secret exists, and the second is whether it has been misappropriated.  For linguistic and historical reasons, the word "infringement" is not used in trade secret law.

What specific sections of the Ohio Uniform Trade Secrets Act govern these two fundamental issues: (a) the existence of a trade secret (validity) and (b) its misappropriation (infringement)?  On what fundamental concepts does each of those issues depend, and what words in the statute invoke those concepts?

3.  You can familiarize yourself with the statute and, at the same time, review the cases we have studied so far, in the following way.  For each case, consider the three fundamental questions: (1) does a trade secret exist, (2), if so, has it been misappropriated, and (3), if so, what is the appropriate remedy?

Try to answer each question, on the facts of each case, by applying the Ohio Uniform Trade Secrets Act, rather than the law discussed in the opinion.  What sections of the statute apply to the given facts, and on what particular words in the statute does each issue turn?  On each issue, would the case turn out the same way under the Ohio Uniform Trade Secrets Act as on the law actually applied?  If not, why not?

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