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Trade Secrets
University of Florida School of Law
Rowe, Elizabeth A.

Trade Secrets with Professor Rowe

Table of Contents:
1. Introduction; Background of Trade Secret Law
2. Common Law; UTSA
3. Relationship to Other IP Laws; Property or Quasi-Property?
4. Elements of a Trade Secret; Secrecy; Value
5. Rights and Ownership in Trade Secrets; Reverse Engineering
6. Misappropriation; Improper Means
7. Contractual Agreements; Nondisclosure Agreements; Noncompete Agreements
8. Managing Trade Secrets; Protection Programs; Employee Hiring and Termination
9. Injunctions; Inevitable Disclosure
10. Trade Secrets and the Internet/Computers; Free Speech
11. Pre-litigation Strategies
12. Pretrial and Trial Issues; Discovery; Protective Orders; Experts; Trial Strategy
13. Criminal Issues
14. Government and International Issues

1. Introduction; Background of Trade Secret Law
Kewanee Oil Co. v. Bicron Corp. (p35) (U.S. 1974):
without trade secret law, organizes scientific and technological research could become fragmented, and society
as a whole would suffer
state interest in denying corporate espionage because it is an invasion of privacy
state trade secret laws do not threaten patent system, thus federal patent laws do not preempt those statutes
trade secret does not need to be in use to be protected
negative information comprised of failed research or an ineffective process is also protected
theft by employees is far more prevalent than theft by outsiders
once a trade secret is posted on the Internet, it is effectively part of the public domain, impossible to retrieve
trade secret program:
1. identify the specific information that qualifies as a trade secret
2. efforts to maintain the secrecy of the information
competing policies behind trade secret law:
1. morality
2. encouragement of innovation
3. encouragement of sharing of knowledge
4. protection of commercial privacy
5. mobility of labor
6. protection of free competition
three bodies of law:
1. Restatement of Torts
-requires continuous, not single, use of trade secret
2. Restatement of Unfair Competition
-states not adopting: Massachusetts, Texas, New Jersey, North Carolina, Wyoming, New York
trade secret is one step above confidential information

2. Common Law; UTSA
Van Products Co. v. General Welding & Fabricating Co. (p.77) (Pa. 1965):
if the validity of a patent is the principal issue involved, then the jurisdiction of the federal courts is exclusive
E.I. DuPont de Nemours Powder Co. v. Masland (p.75) (U.S. 1917):
Justice Holmes, instead of starting with property notion of trade secrets, began with confidential relationship
Alphamed Pharmaceuticals Corp. v. Arriva Pharmaceuticals, Inc. (presentation case) (S.D. Fla. 2006):
π did not show any proof of damages and thus could not maintain a claim
professor: this is faulty logic since the court should have determined whether there was a trade secret first,
then looked at damages
Harvey Barnett, Inc. v. Shidler (presentation case) (10th Cir. 2006):
facts that ∆ had no prior experience in training infants to swim prior to join

gh County, Florida (handout) (M.D. Fla. 1999):
π’s copyrighting of his work negated any possible trade secret misappropriation claim
professor: this is a horrible example
Stromback v. New Line Cinema (presentation case) (6th Cir. 2004):
π’s trade secrets claims were not preempted by copyright law since the former had an extra element of
because ∆’s works were not substantially similar and π’s ideas were common themes and plots, π had no valid
trade secret claim
Callaway Golf Co. v. Dunlop Slazenger Group Americas, Inc. (presentation case) (D. Del. 2004):
test for determining use is substantial similarity between the two products
you can enforce your patent even if you got your technology from another’s trade secrets
advantages to trade secret protection:
1. it’s free
2. it’s potentially perpetual as long as you keep it secret
3. patents can be held invalid
4. difficult to identify patent infringers
5. you can license your trade secret for an indefinite time, even after it’s become publicly known
advantages of patent:
1. can be enforced against everyone in the U.S.
2. can be enforced regardless of fault
3. more valuable in the sense that one can evaluate its worth