Intellectual Property Outline

IP Survey Outline
Prof. Gibbons Fall 09

Trade Secret
-Definitions (State Law, so different approaches)
1. USTA § 1(4) (passed by 40 states) – information, including a formula, pattern, compilation, program, device, method, technique, or process that:
(a) Has economic value from not being generally known
(b) and is not readily ascertainable by proper means
(c) efforts for reasonable amount of secrecy under circumstances
i. Confidentiality
ii. Locking in safe
(d) Value gained by any other person obtaining it
2. RS of Torts – any information used in one’s business that gives its owner an opportunity to obtain an advantage over competitors who do not know or use it so long as it’s secret
3. RS3d of Unfair Competition Definition – “any info that can be used in the operation of a business or other enterprise that is sufficiently valuable and secret to afford an actual or potential economic advantage over others”
Factors of a Trade Secret:
1. Extent to which info is known outside of business
2. Extent to which info is known by employees and others involved in business
3. Extent of measure taken to guard secrecy of info
(a) Absolute secrecy not required – reasonable attempt to profit from secret and implied duty to not spread secret if done in business context
4. Value of info to business
5. Ability of others gain knowledge from legitimate means – UTSA (process that secret is gained by another – RS Radom- Hass (Tort idea))
Elements of Misappropriation of Trade Secret:
1. Is it a trade secret?
(a) Information not generally known
(b) Not readily ascertainable (not req’d in CA)
(c) Reasonable efforts under circumstances to maintain secrecy
(d) Commercial value
2. Was it misappropriated?
(a) By improper means; or
(b) Breach of confidence
3. Legitimate means to gain info (defenses)
(a) purchase it
(b) legally observe it
(c) reverse engineer
(d) Freedom of Information Act (forms filed with gov’t)
(e) Marketing
(f) SEC filings
(g) Employee directory
Public Disclosure of Trade Secrets by owner
1. Advertise – Lost
2. Disclosure of Product
(a) TS apparent – Lost
(b) TS hidden – Depends
i. Reverse engineering – Lost
3. Accidental – Others cannot knowingly disclose
Trade Secrets: Remedies CB 105
1. Injunctive relief (§ 2)
(a) Look to put parties in as good a position as if the secret had not been misappropriated
(b) Duration: to deprive misappropriator of commercial advantage for time gained using secret
(c) If injunction is unreasonable, condition future use on royalty
(d) Affirmative acts to protect trade secret where appropriate
2. Damages (§ 3)
(a) Compensatory
i. actual
ii. Unjust enrichment (D’s profits)
(b) Exemplary – if willful and malicious (up to double)
3. Atty Fees (§ 4) – if willful and malicious
4. Criminal
(a) State protection
(b) Economic Espionage Act
(c) Computer Fraud and Abuse Act – Use of computer in excess of authorization at work
Public Disclosure of TS by others

Theft – Not lost
Legal complaints – Depends how open
Employees – Not Lost

Confidential Relationship
1. RSUF § 41 – confidential relationship established in the following:
(a) Express – the person made an express promise of confidentiality prior to the disclosure of the trade secret
(b) Implied – The trade secret was disclosed to the person under circumstances in which the relationship between the partie