This is the third in a multi-part discussion [first part] [second part] about whether and when to cut-off damages for trade secret misappropriation. Similar posts on LinkedIn at [first], [second] and [third].

Guidance from the courts on these questions is not always consistent and depending upon the jurisdiction may not exist. This makes it hard to predict in a particular matter the length of time that will be allowed for recovery of trade secret damages.

A possible solution, one which is well-grounded in UTSA principles and related commentary, is extending the damages accounting period for as long as necessary to eliminate the unfair commercial advantage gained from actionable misappropriation. See Uniform Trade Secret Act (UTSA), § 3 cmt. (“Like injunctive relief, a monetary recovery for trade secret misappropriation is appropriate only for the period in which information is entitled to protection as a trade secret, plus the additional period, if any, in which a misappropriator retains an advantage over good faith competitors because of misappropriation.”).

Our first installment explained that the damages accounting period may extend beyond the time a trade secret is no longer protected because it has lost its secrecy.* Our second  installment acknowledged that there are circumstances where damages end before the loss of secrecy. Why? Because the end of the commercial advantage period — the end of the time necessary to deprive the defendant of an unfair commercial advantage that is attributable to misappropriation – occurs before the trade secret loses its secrecy.

This installment addresses the use of the so-called “head start” rule as a temporal limitation on damages and flags different interpretations of the rule that may cause confusion or misunderstanding about the proper duration of a damages award. The many and varied head start concepts may compel a court to limit or expand damages in a manner that is inconsistent with the core principle of eliminating unfair commercial advantage.
Continue Reading Unfair Head Start and Trade Secret Damages

This is the next in a multi-part discussion of measuring the accounting period for trade secret damages. The common theme across these discussions is the need to untether the liability requirement of secrecy from the damages goal of awarding as much as necessary (but no more than) to eliminate unfair competition. Similar versions of the first and second parts of this series can also be found on the LinkedIn.

Our previous article posed the question as to when it was appropriate to cut-off money damages for trade secret misappropriation. Answer: damages for trade secret misappropriation should last as long as (and no longer than) necessary to eliminate commercial advantage due to misappropriation. This answer justifies extending the damages accounting period beyond the time a trade secret is no longer protected because it has lost its secrecy.

As explained in this article, the opposite is also true. There are circumstances where damages accounting period runs before the loss of secrecy. Why? Because the end of the commercial advantage period — the end of the time necessary to deprive the defendant of a head start or other unfair commercial advantage that is attributable to misappropriation – occurs before the trade secret loses its secrecy.

Practically speaking, the primary consideration in determining the cut-off date for damages is the end date for eliminating the unfair commercial advantage attributable to the misappropriation. This cut-off date may pre-date or post-date the loss of secrecy depending upon the facts in a particular case.
Continue Reading Ending Damages for Trade Secret Misappropriation before the Loss of Secrecy

This is first in multi-part discussion of measuring the accounting period for trade secret damages. First up: untethering the liability requirement of secrecy from the damages goal of awarding as much as necessary (but no more than) to eliminate unfair competition.

Trade secrets qualify for protection only so long as they are not generally known or ascertainable through “proper means” such as independent invention, reverse-engineering, observing them in public use or obtaining them from public literature. See Uniform Trade Secrets Act (UTSA) § 1(4); id., cmt. Extending the protection of a trade secrets beyond this point contravenes the public interest in avoiding unnecessary restraints on exploitation of valuable information. Restatement 3d Unfair Competition, § 39 cmt. f.

One might conclude then that the cut-off for damages for trade secret misappropriation should be the end of the secrecy period (i.e., the period the trade secrets were not known or knowable through proper means). And there are some cases that taken this position, including the recent decision of the Delaware district court in Liqwd, Inc. and Olaplex v. L’Oreal USA, Inc., 1:17-cv-14, D.I. 1078 at 3 (D. Del. Aug. 20, 2019) (Memorandum and Judgement following entry of jury verdict). See also id. D.I. 1162 at 9, 2019 U.S. Dist. LEXIS 215668, at *12-13 (D. Del. Dec. 16, 2019) (Order denying plaintiffs’ motion to alter judgment); id. D.I. a1184 at 2 (D. Del. Mar. 24, 2020) (entry of final judgment).

However, the Liqwd decision to cut off damages as of the loss of secrecy may contravene the guiding principle that damages should last as long as necessary to deprive the defendant of a head start or other unfair commercial advantage that is attributable to misappropriation.
Continue Reading Extending Damages for Trade Secret Misappropriation beyond the Loss of Secrecy

The Defend Trade Secrets Act (DTSA) provides a private right of action under federal law for trade secret misappropriation. It extends to reach a foreign corporation’s conduct occurring outside the United States “if . . . an act in furtherance of the offense was committed in the United States.” 18 U.S.C. § 1837(2). However, the DTSA does not define “an act in furtherance” and until recently there was no case law addressing the question; absent such guidance there is uncertainty about the DTSA’s extraterritorial reach. This may be changing.

Luminati Networks, Ltd. v. BIScience, Inc. 2019 U.S. Dist. LEXIS 79843, at *21-22 (E.D. Tex. May 13, 2019) and Micron Tech., Inc. v. United Microelectronics Corp., 2019 U.S. Dist. LEXIS 74527, at *11 (N.D. Cal. May 2, 2019) appear to be among the earliest if not the first cases to define an “an act in furtherance” and their definitions support the broad extension of the DTSA to cover extraterritorial misappropriation.Continue Reading Extending Defend Trade Secrets Act to Reach Overseas Theft of Trade Secrets

The Defend Trade Secrets Act (“DTSA”), on its face, creates a private action in district court for misappropriation occurring abroad.  Filing a DTSA claim in district court may in certain circumstances provide the best remedy for foreign trade secret theft over other alternatives such as filing a complaint with the International Trade Commission.  But over

Dave Bohrer’s recent post Extending US Trade Secret Law to Reach IP Theft in China discusses what to do when your company’s Chinese joint venture makes off with your trade secrets in China.  The post suggests it may be possible to bring an action in US court extending either federal or state trade secret law extraterritorially to reach the misconduct in China.

In response to Dave’s post, I suggest that there is another, complementary alternative to a US-based civil action: bring a complaint asserting trade secret theft and unfair competition to the U.S. International Trade Commission (“ITC”) under Section 337 of the Tariff Act.

The ITC, despite its name, is a U.S. federal agency that operates as U.S. district court with a twist – extraterritorial reach to address unfair acts that take place entirely oversees, and in rem jurisdiction over Chinese respondents based on the importation of goods into the United States.   The ITC cannot award damages but it can close the borders to goods from Chinese entities that steal trade secrets, effectively a national injunction.  Your aggrieved U.S. client at least won’t find itself competing with its own purloined knowhow in the U.S. market.   ITC cases are fast (18 months or less, soup to nuts) and furious (offering remedies with teeth that not only exclude unfairly traded goods, but which can bind U.S. distributors and retailers with cease and desist orders).

The ITC came into its own as a forum for litigating trade secrets with the TianRui case in 2008.  In that case, employees from a Chinese-U.S. railway equipment joint venture departed and started a new Chinese company, using the stolen trade secrets.  Soon the U.S. partner was facing U.S. imports of Chinese railways using the stolen technology.  The ITC found, and the Federal Circuit affirmed, that the Commission had authority under Section 337 of the Tariff Act to apply U.S. trade secret law to bad actors and unfair acts that took place entirely in China.  The Federal Circuit expressly held that “section 337 applies to imported goods produced through the exploitation of trade secrets in which the act of misappropriation occurs abroad.   In reaching this decision, the Federal Circuit effectively treated the Uniform Trade Secrets Act as federal common law and found the Commission’s determination to comply with basic trade secret principles.  ITC findings of fact and law in “unfair acts” cases are preclusive and bind the district court, giving Complainants the option of a rapid one-two punch of an ITC exclusion order sealing the U.S. border from infringing goods, and then the possibility of walking into the district court for damages without relitigating the merits of the case.

Of particular note is the ITC’s determination in TianRui that “[t]he presumption against extraterritoriality does not govern this case.”   In other words, a trade secret complaint investigated by the ITC avoids entirely what my colleague described in his earlier post as one of the more significant legal hurdles to extending US trade secret law to reach extraterritorial conduct.
Continue Reading Extending US Trade Secret Law to Reach IP Theft in China: An ITC Lawyer’s Reply

Hidden Memory Card  (inspired by ABC's Designated Survivor, 1:9, "The Blueprint," aired Dec. 7, 2016)
Hidden Memory Card (inspired by ABC’s Designated Survivor, 1:9, “The Blueprint,” aired Dec. 7, 2016)

Engineers from your China subsidiary just joined a competing company which has begun using your trade secrets.  Can you sue in the US and avoid the uncertainty and expense of seeking relief in a Chinese court?  The answer is that both federal Defend Trade Secrets Act (DTSA) of 2016 and California’s version of the Uniform Trade Secrets Act (CUTSA), under the right circumstances, may be extended extraterritorially to reach misappropriation outside of the US.

Perhaps surprisingly, it may be harder to do this under the federal law, which expressly provides that it applies to conduct outside the US, than under the California law, which is silent on the subject.  Let’s break this down.

Extraterritorial theft of trade secrets by insider employees or business partners in China is a significant problem as evidenced by the investigation in International Trade Commission cases Amsted v. TianRui (disclosure and use of US company’s trade secrets in China) [the 2011 Federal Circuit decision on appeal] and In re Certain Rubber Resins (same) [the 2014 ITC determination].  The problem reflects the reality of the current business environment, which is global and digital; technology owned by US-based companies is often shared with employees or business partners located outside of the US and it is not unusual for them to move between competitors.
Continue Reading Extending US Trade Secret Law to Reach IP Theft in China

Although many may be asserted, quite often far less warrant protection
Although many may be asserted, quite often far less warrant protection

The question is whether it is possible to get a court to enter partial summary judgment before trial on some but not all of the trade secrets that the defendant is accused of stealing.

As discussed in the Sept 28 post, the answer is that this may not be possible if the lawsuit is filed in California state court.

But if the trade secret lawsuit is filed in federal court, the answer is yes.  In federal court, it is easier to weed out before trial alleged trade secrets that do not satisfy the legal requirements for protection.

Why should we care?  For each allegedly misappropriated trade secret that is allowed to be argued at trial, the costs incurred in either proving up or rebutting the claim run in the tens if not the hundreds of thousands of dollars spent on attorneys, experts and discovery, not to mention the significant time the court and the jury must devote to determining liability on each such claim.  In other words, the potential savings of time and money to all concerned (court, jurors, and parties) from taking fewer trade secrets to trial are huge. Also, settlement before trial is much more likely if the parties know in advance which trade secret claims will or will not be tried.
Continue Reading You Can Get Partial SJ on Some But Not All Trade Secrets . . . In Federal Court

Jury trial on reasonable royalty? Courtesy Google Images
Right to jury trial on reasonable royalty damages differs depending on whether suit brought under DTSA or California version of UTSA

The new Defend Trade Secrets Act (DTSA) became law on May 11, 2016 and applies to any misappropriation that occurs on or after that date.

Although the DTSA creates a federal, civil remedy for trade secret misappropriation, it does not preempt state law.  This is going to encourage serious forum shopping, including, among other things, over the right to jury trial.

The federal law cedes to the jury the determination of all possible monetary damages claims.  In comparison, the version of the Uniform Trade Secrets Act (UTSA) adopted by California (CUTSA), while giving the jury the issues of lost profits and unjust enrichment, reserves for the trial judge the determination whether and to what extent to award reasonable royalty damages.
Continue Reading Unlike California, New Federal Trade Secret Law Offers Right to Jury Trial on Reasonable Royalty Damages

Late yesterday, the House of Representatives joined the Senate in passing a sweeping new statute that creates a new federal civil cause of action for trade secret theft.  The new statute, called the Defense of Trade Secrets Act (DTSA), can be found here and is expected to be signed into law by the President within the next few days.

Where will we first see the effects of the new federal trade secret law?  Answer: in the hundreds (thousands?) of currently pending state court trade secret misappropriation cases.  Soon after the DTSA becomes effective there will be a significant increase in federal district court decisions being relied upon in state courts to explain and construe existing state trade secret statutes.
Continue Reading Wave of Federal Trade Secret Decisions Soon to Hit State Courts