Trade Secret (TS)

Theory of TS

  1. Policy 4 Need
    1. Can't benefit w/o making it not secret
    2. Can't enforce K of not telling b/c no consid. if no TS law
    3. Econ'ly waste res's by precaution
  2. Reqts 4 TS C/A
    1. TS
    2. Improper Taking
  3. TS
    1. Rest 757)b
      1. Extent 2 which info known outside, others in busi, & ee's
      2. Meas's taken 2 guard secret
      3. Value of info in competition
      4. Amt of effort / $ expended in dev'ing
      5. Ease / hard w/info properly acq'ed / duplicated by others
      6. Seem 2 req. cont. use of info
    2. Uniform Trade Secrets Act 1)4
      1. Info that's indep. econ. value from not being known / readily ascertainable
      2. Rsbl effort 2 maintain secret
      3. Not req. cont. use of into
  4. Improper Taking
    1. Rest : Liab. If
      1. Discov. by improper means
      2. Breach of confidence
      3. From 3rd person w/notice was secret
      4. Was secret & discl. mistake
      5. Improper acq. by 3rd party not axnable but discl. is
    2. UTSA
      1. Improper means incl. theft, bribe, misrep., breach, induced breach, / espionage
      2. Breach of duty
      3. Prevents acq. by person who may know got it improperly
    3. Rest. on use & discl. but UTSA on acq., use, & discl.
    4. Breach of Confidence Categ's
      1. Breach of express K
      2. Breach of implied K / Q-K'al
      3. Duty of confidence from rel.
  5. Protection
    1. Limited 2 protect only against those engaging in improper behav.
    2. Protect forever until secret gone
  6. Reverse Engineering
    1. Gen'ly Not Wrongful Means of Acq'ing Info
      1. If all can reverse, probably no TS b/c widely known / readily ascertainable
    2. Wrongful (Du Pont)
      1. When take in moment of spec. vulnerability, improper by comm'l morality
  7. Empl. & TS of Customer List / Info
    1. Er's secret info v. ee's mobility & entitlement 2 gen. accumulation of skill
      1. Info of gen. accumulation of skill & experience isn't TS (Fleming)
      2. Written agmts help er's
        1. Nondiscl. agmt
        2. Restrictive cov. but disfavored & need 2 B rsbly nec. w/o harm 2 pub.
        3. Choice of law cl.
  8. TS Litig.
    1. Prob. of Discl'ing Secret
    2. Remedies
      1. UTSA allows injunction until TS out but cont'ed 4 add'al X 2 elim. comm'l adv. from misapprop.
      2. UTSA allows 4 actual damages + unjust enrichment but can also B rsbl royalty payment 4 D's use of TS
      3. UTSA allows exemplary damages 4 wilful & malicious up 2 2X compensatory
      4. Atty fee if egregious
  9. Int'l: Trade Rel'ed Aspects of IP Rts (TRIPs)
    1. Members protect aginst unauth'ed acq. & dishonest use if info
      1. Secret so not gen'ly known among / readily accessible
      2. Comm'l value b/c secret
      3. Subj. 2 rsbl steps 2 keep it secret
  10. Ownership of TS
    1. In Work Setting
      1. If ee specif'ly hired 4 R&D, imply agmt that er has rt 2 invention & TS
      2. If ee not hired 4 R&D but invented during working hrs / used er's equip / material, then ee owns TS but er gets shop rt of irrevocable nonexcl license 2 pract. invention

This material is copyrighted by the author. Use of this material for profit is strictly prohibited without written consent from the author.

12/2/1996

Ms. Haeji Hong

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