A new proposed trade secrets bill in Massachusetts

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cropped-cimg27721.jpgIt’s that time of year again. With the elections behind us and the next legislative session coming soon, a new version of a proposed Uniform Trade Secrets Act has been filed in Massachusetts. (This version, filed on November 5, 2014, is available here.)

This one, like the earlier versions, was filed by Stephen Chow on behalf of the Massachusetts Board of Commissioners on Uniform State Laws. (Steve has worked tirelessly on this project for many years.)

In my opinion, if adopted, this version would strengthen Massachusetts trade secrets law.

By way of background, in the last legislative session, I was asked by Senator Will Brownsberger, Representative Lori Ehrlich, and Jennifer Lawrence (not that one! – the Jennifer Lawrence who was spearheading Governor Patrick’s noncompete/trade secrets reform efforts) to review and comment on the then-pending bill. In the course of doing so, I identified and raised three primary concerns:

  • It protected only trade secret owners (not others with rights in the secrets such as licensees).
  • It required the trade secret owner to continue to protect the secrecy of the information even after the secret was stolen and regardless of whether the person/company that stole it had publicly disclosed it.
  • It potentially raised the pleading standards for filing a trade secrets claim.

(Additional explanations of these concerns are here.)

I expressed those same concerns during my testimony at the May 9, 2014 hearing before the Joint Committee on Economic Development and Emerging Technologies.

Following that hearing and in anticipation of filing the current bill, Stephen Chow approached me to discuss my concerns (those above, as well as several other less-important “tweaks”). After numerous discussions and drafts, we agreed on the language that Steve filed on November 5.

I am now quite comfortable that Steve’s current version will improve Massachusetts trade secrets law. Among other things, if adopted, it would allow treble damages and attorneys’ fees without the need to resort to G.L. c. 93A; it would expand the definition of what constitutes a trade secret under Massachusetts law; and it would reach an appropriate balance between the need to identify the purported trade secrets sought to be protected and the need to act quickly and limit disclosure (both in terms of what must be disclosed and the timing of that disclosure).

 

 

 

 

 

Trade Secret | Noncompete – Issues and Cases in the News – September 2012

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It seems that, lately, each installment of Trade Secret | Noncompete Issues and Cases in the News could be called, “What I read over my vacation.” As was inevitably the case, given the time between posts, there is again a lot here! Enjoy…

Please note that there are some things that require action, in particular, in New Hampshire, so, if you read nothing else, please check the jurisdictions in which you do business.

Federal/EEA: Some of the big news on the federal side: There is a renewed effort to bolster the Economic Espionage Act. For the latest, see: US House Passes Tougher IP Theft Bill (discussing the Foreign and Economic Espionage Penalty Enhancement Act of 2012, which would increase penalties for trade secret theft) and Senators Kohl and Coons Announce the Protecting American Trade Secrets and Innovation Act of 2012: Can they Get It Done This Time? (discussing the creation of a federal trade secret private right of action).

4th Circuit/CFAA: The split in the circuits on the issue of the scope of the Computer Fraud and Abuse Act continues to grow as the 4th Circuit adopts the 9th Circuit’s narrow reading of the Act in WEC Carolina Energy Solutions LLC v. Miller. For an excellent discussion, see the Circuit | Splits blog’s post, “4th Circuit Deepens Division Over Scope of Computer Fraud & Abuse Act.” Keep your eyes on this issue for a petition to the Supreme Court (even though, as Brian Bialas notes here, the US Solicitor General did not petition for review of the Nosal case).

Arizona: The 9th Circuit, in Management and Engineering Technologies International, Inc. v. Information Systems Support, Inc., interpreting Arizona’s version of the Uniform Trade Secrets Act, held (based on the facts of the case) that a plaintiff’s roster of employees is not a trade secret. For a discussion of the case, see UnIntellectual Property.

California: As most experienced trade secret / noncompete lawyers know, California has a strong public policy against noncompetes (and nonsolicitation agreements, etc.), with few exceptions. In a recent case, Fillpoint, LLC v. Maas (August 24, 2012), the California Court of Appeals (Fourth Appellate District) provided some recent clarification on the exceptions. For an excellent summary, see California Court Strikes Down Post-Employment Non-Compete Agreement, Raising Questions about the Validity of Employee Non-Solicits.

Georgia: On June 24, the 11th Circuit issued an unpublished decision (Becham v. Crosslink Orthopaedics, LLC) in which the Court made clear that the Georgia Legislature’s initial efforts to change Georgia’s noncompete law effective November 3, 2010 were unconstitutional; the law applies only prospectively, starting May 11, 2011. Accordingly, agreements entered into prior to May 11, 2011, are subject to Georgia’s prior (much more noncompete-unfriendly) law. For an excellent discussion of the case, read Benjamin Fink and Neal Weinrich’s post, An Important Development Regarding Georgia’s New Restrictive Covenants Law, on Georgia Non-Compete and Trade Secret News.

Iowa: In a recent, very fact-driven case involving the intersection of open records laws and trade secrets laws (see “Trade Secrets at the Intersection with Public Records” in a prior “Noncompete – Issues and Cases in the News” post), the Iowa Supreme Court held that trade secret protection was not available to a filmmaker’s budget summaries where the filmmaker was receiving tax credits. See Film Budget Summaries Are Not Trade Secrets.

Massachusetts: A recent decision, U.S. Electrical Services, Inc. v. Schmidt, from Judge Casper of the United States District Court provides a great summary of the distinction between the inevitable disclosure doctrine as a trade secret concept (used to get an injunction in the absence of a noncompete) on the one hand and using the likelihood of “inevitable disclosure” as the standard determining whether the breach of a noncompete is likely to cause irreparable harm to a former employer.  This distinction is often overlooked, and the concepts easily confused, so the case is definitely worth a read. In addition, it’s also interesting in that Judge Casper observes that Massachusetts has not adopted the inevitable disclosure doctrine, and then, nevertheless, analyzes the facts under the doctrine. For more discussion, see “Ex-employees’ work for competitor OK, Inevitable disclosure doctrine inapplicable,” in New England In-House.

Missouri: The latest statement by the Missouri Supreme Court (in Whelan Security Co. v. Kennebrew) on Missouri noncompete law. To hear the oral arguments or read the briefs, click here.

Nevada: The United States District Court for the District of Nevada held in Switch Communications Group v. Ballard that the plaintiff must first identify trade secrets with reasonable particularity before the defendant would be required to respond to discovery.

New Hampshire: There is both a very important statutory noncompete development and an interesting Computer Fraud and Abuse Act decision in New Hampshire recently.

Statutory Development: Those of you who are regular readers of this blog know that I have been assisting Representative Lori Ehrlich and Senator Will Brownsberger on the Massachusetts noncompete bill for the past several years. Well, while Massachusetts has been working on a comprehensive review, clarification, and overhaul of its noncompete laws, New Hampshire took a more streamlined approach and, as of July 14, 2012, will require advance notice of noncompetes and “non-piracy” agreements.

Companies need to comply now; comport your practices to the statute immediately. This affects new hires and existing employees.

The operative text of the law is as follows (and a link to the law in its entirety is available here):

Prior to or concurrent with making an offer of change in job classification or an offer of employment, every employer shall provide a copy of any non-compete or non-piracy agreement that is part of the employment agreement to the employee or potential employee. Any contract that is not in compliance with this section shall be void and unenforceable.

Now for the questions… While the statute was obviously intended to prevent the circumstance where an employee does not learn that he will be bound by restrictive covenants until he commences work (or some time after), by not defining key terms, the statute seems to have created quite a few uncertainties.  For example, does “non-compete” mean just a traditional noncompete or does it include garden leave clauses? Given that people often use the term “noncompete” to mean nonsolicitation agreements as well, as are those included?  What about nondisclosure agreements (which are also sometimes grouped in as “noncompetes”)? What is a non-piracy agreement? (Typically, that is a restriction on raiding employees, although it may be more likely that in New Hampshire it will be interpreted as an agreement not to solicit customers.) What about the meaning of a “change in job classification”? Is it a promotion? Is a change in title sufficient? Is it classification for wage laws? Will a significant raise be enough? If it is only some limited circumstance, what happens if a company legitimately needs to require a noncompete after an employee is working, but there is no “change in job classification,” does that mean no noncompete? What will happen to other (less restrictive) types of restrictive covenants, such as forfeiture agreements, forfeiture for competition agreements, nondisclosure agreements, etc.?

CFAA Decision: The United States District Court for the District of New Hampshire in Wentworth-Douglass Hospital v. Young & Novis Professional Association has, despite First Circuit precedent (in EF Cultural Travel BV v. Explorica, Inc.) seemingly to the contrary, applied a narrow interpretation to the Computer Fraud and Abuse Act.

Ohio: Two recent cases from Ohio are very interesting:

  • As discussed previously here (see Ohio section), the Ohio Supreme Ohio Supreme Court, on May 24, 2012, issued a decision (Acordia of Ohio, L.L.C. v. Fishel) on a significnt issue that is unsettled in many states: The assignability (typically in a corporate merger or acquisition) of an employee noncompete. In short, the Ohio Supreme Court held that to be assignable, noncompetes must say so. However, on July 25, the Ohio Supreme Court issued a decision agreeing to reconsider its decision. Stay tuned!

Invention Assignment Agreements: Invention assignment agreements are agreements where, typically, an employee will assign to his employer all rights to virtually anything he “invents” (or even thinks of in the shower) during the time of his employment, and frequently for a period after. There are very few cases addressing these agreements. However, recently, there were three: one in Wyoming, one in South Carolina, and one in Massachusetts.

I previously covered (with relevant links) the Wyoming case here. For an excellent analysis of the South Carolina case, see Ken Vanko’s post, Supreme Court of South Carolina Address Validity of Invention Assignment Clause.

In the Massachusetts case (Grocela v. The General Hospital Corporation), the Superior Court (Lauriat, J.), considered a physician’s claim that an invention assignment agreement – requiring Grocela to assign to Massachusetts General Hospital any inventions “that arise out of or relate to [his] clinical, research, educational or other activities . . . at [MGH]” – was unenforceable. The Court started from the premise that, “In general, the ‘law looks upon an invention as the property of the one who conceived, developed and perfected it, and establishes, protects and enforces the inventor’s rights in his invention unless he has contracted away those rights.’” The Court did, however, then consider issues of reasonableness, though not going so far as applying (expressly, at least) the standard reasonableness test (time, place, scope, narrowly tailored to protect legitimate business interests) typically applicable to restrictive covenants (which include invention assignment agreements). In the end, the Court found the assignment enforceable.

Criminal:

Related Items of Interest:

Trade Secret | Noncompete – Issues and Cases in the News – December 2011

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Like a similar post last month, this post provides a summary of noncompete and trade secret issues and cases that have arisen in the past month or so, but that I have not already addressed in recent posts. In addition to my summary, you will find links for more in-depth reading on each issue. (There’s a lot here again, enjoy.)

Eighth Ciruit (Indiana and Missouri):  The 8th Circuit, applying Indiana and Missouri trade secret law, issued a recent decision (AvidAir Helicopter Supply, Inc. v. Rolls-Royce Corporation) addressing a common question: When can publicly-available information be a trade secret? The court focused on the effort to compile the information:

Compilations are specifically contemplated in the UTSA definition of a trade secret, and the fact that some or even most of the information was publicly available is not dispositive of the first factor in the UTSA definition. Compilations of non-secret and secret information can be valuable so long as the combination affords a competitive advantage and is not readily ascertainable. . . . Compilations are valuable, not because of the quantum of secret information, but because the expenditure of time, effort, and expense involved in its compilation gives a business a competitive advantage. . . . This value is not dependent on how much of the information is otherwise unavailable because “the effort of compiling useful information is, of itself, entitled to protection even if the information is otherwise generally known.”

Ninth Circuit (California): On December 15, the 9th Circuit took oral argument  in its en banc (full court) review of the controversial United States v. Nosal decision holding that the Computer Fraud and Abuse Act (“CFAA”), 18 U.S.C. § 1030 applies to “an employee . . . when he or she obtains information from the [employer’s] computer and uses it for a purpose that violates the employer’s restrictions on the use of the information.”

California (as interpreted by an Idaho court): The Idaho Supreme Court issued a decision on November 30, 2011 (T.J.T., Inc. v. Mori) that, under California law, a seller of a business who, upon the sale, becomes an employee of the acquiring company can be bound by a noncompete agreement that he entered into as part of the sale of a business.

Colorado: In an October 12, 2011, the District of Colorado issued a decision (L-3 Communications Corporation v. Jaxon Engineering & Maintenance, Inc.) discussing the level of specificity necessary to satisfy the requirement that trade secrets be identified “with reasonable particularity.” The decision also addresses the use of filing trade secrets under seal as “[i]n order to preserve the secrecy required for such material.”

Delaware: The District of Delaware issued a recent decision (actually, a report and recommendation subject to review by the district court judge) analyzing the standards (under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937 (2009)) required to plead a trade secrets claim under the Delaware Uniform Trade Secrets Act, 6 Del. C. §§ 2001-2009.

Georgia:  Coca-Cola put its secret formula “on display.” Don’t get too excited, the formula held up as one of the most famous trade secrets in the world (whether the legendary security measures are true or not) is not really on view. See here.

Massachusetts: Faithless employee? The Massachusetts Appeals Court, in Specialized Technology Resources, Inc. v. JPS Elastomerics Corp, barred a former employee and his new employer not only from using the stolen trade secrets until such time as they are no longer trade secrets (if that should ever happen), but – for five years – from producing a similar product by any means.

Michigan: No noncompete? No problem. If your employee steals trade secrets, you may still have a remedy. The Michigan Court of Appeals, in Actuator Specialties, Inc. v. Chinavare, is the latest to grant a “head start” injunction against a faithless former employee who stole trade secrets. In Actuator Specialties, the court barred the employee from working for a competitor for three years, seemingly recognizing that that small companies may not take all the steps one would expect of more sophisticated companies (such as requiring employees to agree to relevant restrictive covenants). Another interesting aspect of the case is that the defendant employee took steps that would be barred by the requested injunction in the period between the time that the injunction was sought and when it was issued. This is an issue that comes up often, and the Michigan Court of Appeals was clearly displeased with the employee’s conduct during that window.

Montana: The Montana Supreme Court, in Wrigg v. Junkermier, held that there is no legitimate business interest (a necessary element to enforcement of noncompetes in most states) in enforcing a noncompete against a former employee who was terminated by the company without cause.

Oklahoma: Despite what these recent cases suggest, noncompete decisions from appellate courts are few and far between. In Oklahoma, where true employee noncompetes are not enforceable, they are even fewer and farther between. But, in a recent Oklahoma Supreme Court decision, Howard v. Nitro-Lift Technologies, the court considered whether it should modify a broad noncompete to, essentially, convert it into a permissible nonsoliciation agreement (which has its own limitations in Oklahoma – which must be considered when writing such agreements). The court declined to do so, “because judicial modification cannot be accomplished without rewriting the agreement to cure multiple defects, leaving only a shell of the original agreement, and would require the addition of at least one material term . . . .”

Virginia: Virginia’s genera cap on punitive damages ($350,000) applies to the entire trade secret case – not to each trade secret. E.I. DuPont De Numours & Co. v. Kolon Indus., Inc., 2011 WL 5872895 (Nov. 22, 2011).

International: Theft by foreign nationals continues. See Scientist gets 7-plus years for trade secret theft. But as I recently observed to reporter Jan Wolfe (reported in Don’t Blame China for Trade Secrets Left (on Law.com)), international trade secret theft is a much smaller problem than domestic misappropriation.

Related Items of Interest: A few obscure issues are worth a look. In particular, (1) whether a signature is required for a noncompete to be enforceable (remember the analogous case out of New York a few years ago (IBM v. Johnson), where the employee escaped the agreement because he signed in the wrong place); and (2) what happens when there is a dispute about a “missing” noncompete (I represented an employee in one of these relatively-rare cases this past year, and the validity of the purported noncompete was never resolved). Ken Vanko wrote a nice summary of the key considerations for both of these issues: Are Signatures Required on a Non-Compete Agreement? (U.S. Risk Mgmt. v. Day); and Stealing a Non-Compete Agreement May Not Do You Any Good and It Could Land You In Jail.

“Google this!,” says PayPal

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While everyone else gets their information by googling it, how does Google get its information? Well, according to Pay Pal, it steals it.

Just two days ago (Friday, May 27, 2011 – for those reading this some other time), Google (in conjunction with MasterCard, Citigroup, Sprint, and First Data) announced a new service by which people can use their mobile phones as credit cards.  See Reuters here.

Later that same day, PayPal reportedly sued Google (and two former PayPal employees, Osama Bedier and Stephanie Tilenius) in Califorina, alleging (among other things – as is customary) that Google acquired PayPal’s trade secrets relating to its mobile phone payment service, and that Google did this by hiring these two individuals. See LA Times here. The case (complaint here) also accuses one of the employees of breaching an anti-piracy agreement.

The case – if it goes anywhere – raises some interesting issues at the intersection of employee mobility and right to work on the one hand and the right to protect trade secrets on the other hand. In particular, while in many states, this would be a relatively straight-forward case for PayPal, in California, which has a strong public policy favoring employee mobility and the right to work, it will be a rare test of how the California courts balance these two important policies – especially following the California Supreme Court’s 2008 seminal case on restrictive covenants such as the anti-piracy agreement involved here (Edwards v. Arthur Andersen).

Stay tuned!

No Oracle Necessary

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Well, I guess it’s not such a bad thing that my last post was about the HP/Oracle/Hurd dispute, as there’s more to report. It’s settled. No surprise there; most of these cases do settle – and settle quickly. You didn’t need an Oracle to predict this outcome. (Sorry!) 

The settlement occurred this week, and its terms are confidential.  But, Hurd has reportedly waived a significant portion of his very sizeable severance package.  (See NY Times story.)

So, what’s the news here? Only that we will have to wait a bit longer for California to clarify the scope of its trade secret exception to its ban on noncompetes. So sad.

Is Oracle Going To Be “Hurding”?

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Bad pun aside, Hewlett-Packard has sued its former CEO, Mark Hurd, who left HP last month and reportedly just joined Oracle as its new co-president.  (A copy of the complaint if available here.)  Not surprisingly, HP is claiming that Hurd knows so much of HP’s confidential information that allowing him to work for Oracle – a direct competitor – would cause irreparable harm to HP.

This would be a textbook case for a court to consider enforcing a noncompete and/or nondisclosure agreement and even applying the inevitable disclosure doctrine (more on that here) were it not for the fact that the parties are located in California, which is notoriously hostile to noncompetition agreements, related restrictive covenants, and the inevitable disclosure doctrine.  Indeed, in 2008, the Supreme Court of California issued its seminal decision of Edwards v. Arthur Andersen LLP, closing a loophole that had been opened and expanded by the United States District Courts in California, which had allowed the enforcement of noncompetes in certain circumstances.

That case, however, left open one narrow issue:  whether noncompetes can be enforced to protect trade secrets.  While other California cases have since addressed that issue, the California Supreme Court has not.  This could be the case to do it.

Stay tuned!

The Muffin Man Returns – And So Does Inevitable Disclosure

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You may recall that in February, a senior executive from Bimbo Bakeries USA, Inc. (“Bimbo”) – maker of, among other things, Thomas’ English Muffins – went to work for a competitor. The executive, Chris Botticella, was one of only a few people in the world with knowledge of how the secret behind the famous “nooks and crannies.” That and other knowledge was information that Bimbo claimed would be inevitably used or disclosed if Botticella were permitted to work for Bimbo’s competitor.

The trial court enjoined Botticella based on a legal doctrine known as the “inevitable disclosure doctrine.” On appeal, one of the central issues was the legal showing necessary for the doctrine to apply (and thereby prevent a former employee from working for a competitor, even when the employee is not subject to a noncompetition agreement). The question came down to this: did Bimbo need to show that Botticella would “inevitably” use or disclose the information, or was it sufficient for Bimbo to show that Botticella would “likely” use or disclose the information.

On July 27, the United States Court of Appeals answered that question (under Pennsylvania law). The Court held that the standard is not “inevitability,” but rather “whether there is sufficient likelihood, or substantial threat’ of a defendant disclosing trade secrets.” Affirming the lower court’s finding that disclosure was likely, the Court of Appeals upheld the injunction. (The decision is here.)

So, what’s the takeaway? At least in Pennsylvania, where “inevitable” seems to mean “likely,” application of the inevitable disclosure is something to be seriously considered by employers in the absence of a noncompetition agreement and something that should not be taken lightly by employees considering leaving for a competitor.

For the rest of us, stay tuned. The 3rd Circuit seems to represent the most liberal construction and application of the doctrine. It remains to be seen whether others follow and fill in the nooks and crannies.

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