Massachusetts Noncompete Ban and Modified Version of the Uniform Trade Secrets Act Reported Out of Committee

Leave a comment

cropped-cimg27721.jpgOn April 29, the Massachusetts Legislature’s Joint Committee on Labor and Workforce Development favorably reported out a bill (available here) very close to Governor Patrick’s proposed adoption of a version of the Uniform Trade Secrets Act (“UTSA”) coupled with a ban on noncompetes in Massachusetts. Governor Patrick’s bill is available in whole here or relevant part here. (See What to do if noncompetes are eliminated in Massachusetts.)

Putting aside where you come out on the advisability of eliminating noncompetes (a political and economic decision that has staunch advocates on both sides), the proposed Massachusetts Trade Secrets Act (“MUTA”) is intended to enhance available trade secrets protections, given that they will be weakened by the elimination of noncompetes (one of the main tools currently used to protect them). (Note that it expressly leaves unaffected other restrictive covenants, including nonsolicitation agreements, no-raid/anti-piracy agreements, and nondisclosure agreements.)

The MTSA changes the UTSA in several respects, and, contrary to its intended purpose, may in fact create some additional hurdles to protecting trade secrets.

For example, the UTSA requires that reasonable measures to be taken to protect a trade secret; that makes sense given that the sine qua non of a trade secret is secrecy. However, as currently drafted, MTSA section 1(4)(ii) requires that reasonable measures be maintained even after the secret has been stolen. The result – in some cases – is that a person who steals a trade secret can potentially escape liability if the trade secret owner decides that it is no longer worth spending the money to protect a secret that the misappropriator has publicly disclosed (or even just stolen). In short, it potentially encourages very bad behavior and exposes trade secret owners to increased risk of harm.

Similarly, the same section (MTSA section 1(4)(ii)) permits only the “owners” of a trade secret to protect the secret. While that may seem innocuous, it’s not; it arguably means that licensees and other people who have purchased or otherwise acquired rights to use/protect the trade secrets would be left with nothing; it will kill the value of many trade secrets.

Section 5(b) requires that “averments of trade secrets and misappropriation thereof shall be stated with reasonable particularity in light of the circumstances of the case.” That language, like some other changes in the MTSA, is intended to address an issue that courts wrestle with (with increasing frequency) under the existing language of the UTSA, specifically, how clearly and how early someone claiming misappropriation must identify the trade secrets alleged to have been misappropriated. The problem with section 5(b) in particular is that it may be read to elevate the pleading standard to the point of making it impossible for some companies to protect their secrets.

With regard to the language of the noncompete ban (section 11), while section 2(a) (like the UTSA) permits injunctions, the bill leaves unaddressed whether it permits or precludes a court from issuing injunctive relief essentially in the nature of a noncompete as a remedy in the event of a breach of the other restrictive covenants. In other words, may a court issue an injunction prohibiting someone from continuing to work at a competitor when they have demonstrated themselves untrustworthy, by, for example, breaching a nonsolicitation covenant?

The Governor’s version of the bill is in a separate committee and it remains to be seen how that will be handled. Afterward, whatever bills survive will still need to pass the house and the senate before heading to the Governor.

The deadline is July 31. Stay tuned!

Trade Secrets and Noncompetes – Year in Review 2013

Leave a comment

Document8This past week, the Boston Bar Association held its 14th annual Intellectual Property Year in Review. I covered trade secrets (including related restrictive covenants). Below is a summary of those developments. (If you would like a complete copy of my materials, click here.)

Obama Administration Focuses on Trade Secrets

In February 2013, the Obama Administration issued “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” Part of its strategy included the Administration’s solicitation of public comment.  Thirteen entities and individuals (including John Marsh (submission), Dean Pelletier (submission), Peter Toren (submission), and me (submission)) submitted comments.

At the rollout of the strategy, Attorney General Eric Holder warned,

[T]here are only ‘two categories’ of companies affected by trade secret theft –“[T]hose that know they’ve been compromised and those that don’t know yet.”

. . .  A hacker in China can acquire source code from a software company in Virginia without leaving his or her desk.  With a few keystrokes, a terminated or simply unhappy employee of a defense contractor can misappropriate designs, processes, and formulas worth billions of dollars.

Approximately four months later, on June 20, 2013, the Obama Administration issued its “2013 Strategic Plan for Intellectual Property Enforcement.” As explained by U.S. Intellectual Property Enforcement Coordinator Victoria Espinel, the Strategic Plan “builds on our efforts to protect intellectual property to date, and provides a roadmap for our work over the next three years.”

The focus seems to be on pushing trading partners to increase their trade secrets enforcement efforts, working with the private sector for them to take the lead, and beefing up trade secrets-related legislation.

Economic Espionage Act Getting Beefed Up

The Economic Espionage Act of 1996 (the “EEA”), 18 U.S.C. §§ 1831-1839, was enacted in 1996 to criminalize the misappropriation of trade secrets. It has two operative parts:  Section 1831(a) covering “economic espionage” (i.e., theft of trade to benefit a foreign power) and section 1832(a), covering “theft of trade secrets” (i.e., the theft of trade secrets to benefit someone other than the owner of the secrets). 2013 saw a focus on the EEA.

On December 28, 2012 (so, technically 2012, not 2013), the Theft of Trade Secrets Clarification Act of 2012 amended the EEA in response to US v. Aleynikov, 676 F.3d 71 (2nd Cir. 2012). Specifically, it expanded the reach of the EEA by deleting the old language that cover only trade secrets “related to or included in a product that is produced for or placed in interstate or foreign commerce” and replacing it with language covering trade secrets “related to a product or serviced used in or intended for use in interstate or foreign commerce.” (Of course, by deleting “included in,” the act may have created its own ambiguity as to its scope.)

On January 14, 2013, President Obama signed the Foreign and Economic Espionage Penalty Enhancement Act of 2012. In addition to requiring a review of sentencing guidelines, the Act increased fines for foreign espionage under section 1831. 

Later in 2013, Representative Zoe Lufgren (D-CA) introduced an abbreviated bill known as the “Private Right of Action Against Theft of Trade Secrets Act of 2013.” That bill provides for the addition of the following language to be added to section 1832 of the EEA:

(c)  Any person who suffers injury by reason of a violation of this section may maintain a civil action against the violator to obtain appropriate compensatory damages and injunctive relief or other equitable relief. No action may be brought under this subsection unless such action is begun within 2 years of the date of the act complained of or the date of the discovery of the damage.

(d) For purposes of this section, the term without authorization shall not mean independent derivation or working backwards from a lawfully obtained known product or service to divine the process which aided its development or manufacture.

Computer Fraud and Abuse Act: The Saga Continues

The spotlight on the appropriate scope of the Computer Fraud and Abuse Act (the “CFAA”) continued this year. For example, in Facebook, Inc. v. Power Ventures, Inc., 2013 WL 5372341 (C.D. Calif., Sept. 25, 2013) (denying a motion to reconsider), a website that aggregated data from social media sites like Facebook was found to have violated the CFAA. Of particular note, in the summary judgment decision that was being reconsidered, the court had observed that while using a website such a Facebook.com in violation of its terms of use is not a violation of the CFAA, “access[ing] the network in a manner that circumvents technical or code-based barriers in place to restrict or bar a user’s access” can be a violation. 844 F.Supp.2d 1025, 1036, 1040 (N.D. Calif. Feb. 16, 2012) (noting that California’s penal code’s requirement of “permission” (which is what the court first interpreted) is the equivalent of the CFAA’s requirement of “authorization”). In a similar vein, the Northern District of California denied a motion to dismiss the CFFA claim where the defendant (a competitor of Craigslist) “scraped” the plaintiff’s website after its authorization to do so had been revoked. Craigslist, Inc. v. 3Taps, Inc., 2013 WL 1819999, *3 (N.D. Cal. April 30, 2013).

Closer to home (for me, at least), Massachusetts saw several cases struggle to discern the proper interpretation. In Advanced Micro Devices, Inc. v. Feldstein, 2013 WL 2666746, *3 (D. Mass. June 10, 2013), Judge Hillman, adopted the narrow interpretation, noting that the “narrow interpretation reflects a technological model of authorization, whereby the scope of authorized access is defined by the technologically implemented barriers that circumscribe that access,” and the “broader interpretation defines access in terms of agency or use.” In so doing, Judge Hillman disagreed with Judge Gorton’s interpretation of EF Cultural Travel BV v. Explorica, Inc., 274 F. 3d 577 (1st Cir. 2001), as favoring a broad interpretation. Most recently, in Enargy Power Co. Ltd v. Xiaolong Wang, 2013 WL 6234625 (D. Mass. Dec. 3, 2013), Judge Casper took a more nuanced approach, finding that Wang was not specifically provided access, and therefore defendants’ access exceeded what was authorized. (See also Moca Systems, Inc. v. Bernier, 2013 WL 6017295, *3 (D. Mass. Nov. 12, 2013), in which Chief Magistrate Judge Sorokin described the different interpretations, but noted that he did not need to reach a decision as to which was the proper interpretation). )

On the criminal side, not only was David Nosal (the subject of the 9th Circuit’s high-profile decision (U.S. v. Nosal, 676 F.3d 854 (9th Cir. 2012 (en banc)) narrowly interpreting the CFAA) convicted by a jury, but a firestorm was set off when activist Aaron Swartz, who was being prosecuted under the CFAA for accessing and downloading millions of documents from the online archive (JSTOR), committed suicide. Swartz’s suicide resulted in a bill (“Aaron’s Law Act of 2013”) introduced by Representatives Zoe Lofgren (D-CA), James Sensenbrenner (R-WI), Mike Doyle (D-PA), Yvette Clarke (D-NY), and Jared Polis (D-CO) to narrow the reach of the CFAA.

Aaron’s Law has received significant attention and if passed in one form or another, could have profound implications for the scope of the CFAA. 

State Legislative Developments Are Mixed

Effective September 1, 2013, Texas became the 48th state to adopt some version of the Uniform Trade Secrets Act, leaving Massachusetts and New York as the only two hold-outs. 

Massachusetts continued to pursue adoption of its own version of the Uniform Trade Secrets Act (H.27 and H. 1225) and continued considering changes to its noncompete laws. The two most significant were H.1225, which appended a California model (i.e., a ban on most employee noncompetes) endorsed by Governor Deval Patrick, and the Noncompete Agreement Duration Act” (H. 1715/S. 846), which was the culmination of earlier efforts of Representative Lori Ehrlich and Senator William Brownsberger to overhaul Massachusetts noncompete law and leaves most existing Massachusetts noncompete law in tact, and, as its name suggests, focuses on the duration of noncompetes (creating a presumption that noncompetes longer than 6 months are unreasonable and 6 months or less are reasonable).

Other states have similarly considered laws to modify their own noncompete laws. For example, Connecticut considered (but the Governor vetoed) a bill (Substitute H.B. No. 6658) that would have imposed certain requirements on the assignability of noncompete agreements in the context of mergers and acquisitions; Minnesota considered a bill (H.F. No. 506) to ban employee noncompetes; Illinois considered a bill (HB 2782) that, while stating it permits noncompetes, would permit only nonsnolicitation and no raid agreements (subject to various requirements) and imposing legal fees in favor of the prevailing party in any litigation; Maryland considered a bill (S.B. 51, which received an unfavorable report from the Finance Committee) to render noncompetes unenforceable against terminated employees who were eligible for unemployment benefits; and the New Jersey Assembly introduced a bill (A3970) that would render not just noncompetes unenforceable against terminated employees who were eligible for unemployment benefits, but agreements not to solicit and nondisclosure agreements.

Bad Faith Claims: A Matter of “Common Sense”

Section 4 of the Uniform Trade Secret Act provides that “[i]f . . . a claim of misappropriation is made in bad faith, . . . the court may award reasonable attorney’s fees to the prevailing party.” Each year, more and more are cases doing precisely that.

But what about whether Section 4 applies to a trade secret misappropriation claim maintained in bad faith? According to the Seventh Circuit, it is a matter of “common sense” – it does apply.

The case is Tradesman International, Inc. v. Black, 724 F.3d 1004 (7th Cir. 2013). There, following a favorable summary judgment decision, the defendants sought attorneys’ fees under Section 4 of Illinois’ version of the UTSA. Id. at 1016.  Recognizing that the absence of Illinois precedent on the issue of whether Section 4 applies to actions maintained in bad fait (as opposed to actions filed in bad faith), the Court of Appeals turned to California precedent. Id. Adopting California’s interpretation, the court held,

[W]e we conclude that “made in bad faith” is correctly interpreted as either bringing or maintaining a suit in bad faith.  In addition to the California case law, common sense supports such an interpretation. Regardless of her intentions at the time of filing, surely a plaintiff makes a claim in bad faith if she continues to pursue a lawsuit—even after it becomes clear that she has no chance to win the lawsuit—in order to cause harm to the defendant.

Consequently, we find that the district court erred in determining that a claim “made in bad faith” must be “initiated in bad faith.” A claim is made in bad faith when it is initiated in bad faith, maintained in bad faith, or both.

Id.

While neither Massachusetts nor New York has adopted the Uniform Trade Secrets Act, the Seventh Circuit’s decision will likely have broad persuasive authority in the rest of the country.

Personal Jurisdiction Expanded

Trade secrets litigation often involves interstate disputes. Sometimes there is an applicable contract that includes a forum selection clause and sometimes there is not. And, oftentimes, even when there is a contract with such a provision, there is a question about its enforceability. This year, there were two cases of particular note: An eye-opening decision from the United States District Court for the Southern District of California where there was no contract and a decision from the United States Supreme Court where there was a contract. Both, at least as a preliminary matter, found jurisdiction. 

In Integrated Practice Solutions, Inc. v. Wilson, 2013 WL 3946061 (S.D. Cal. July 31, 2013), the plaintiff, Integrated Practice Solutions, Inc. (“IPS”) provides practice management computer software for healthcare professionals. Id. at * 1. Defendant Wilson worked for IPS until August 20, 2012, as a sales representative and Vice President of Sales. Id. Later, he went to work for IPS competitor, Future Health Acquisition, Inc. (“Future Health”). IPS claimed that Wilson misappropriated its customer list and provided the information to Future Health. Id. 

The only contacts that Future Health, a South Dakota corporation, had with California were “a lone salesman . . . and the occasional trade show,” which the court held were insufficient to establish personal jurisdiction. Id. at *2. However, the court allowed discovery to proceed on the issue of specific jurisdiction, noting that, “that hinges on Future Health’s involvement, or lack thereof, with the alleged actions of Defendant Wilson in misappropriating IPS’s customer list.” Id

As the court explained, “Misappropriation of trade secrets is an intentional tort,” and, as such, “the defendant must be alleged to have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state. Id. (citing Calder v. Jones, 465 U.S. 783, 104 S.Ct. 1482, 79 L.Ed.2d 804 (1984)). Thus, the court reasoned, “if Defendant Wilson did misappropriate the customer list and Future Health did somehow take advantage of that, then Future Health would have purposely availed itself of doing activities in or directed towards California.” Id. at *3. Accordingly, the court retained jurisdiction over Future Health and permitted IPS to take discovery concerning facts relevant to jurisdiction – including, therefore, facts concerning Future Health’s involvement in the alleged misappropriation (which effectively opens the door to extensive discovery). 

Atlantic Marine Construction Company, Inc. v. United States District Court for the Western District of Texas, 134 S.Ct. 568 (2013), although a case involving a contractor’s alleged failure to pay its subcontractor may appear at first blush to be irrelevant to trade secrets litigation, it is in fact quite significant insofar as it makes forum selection clauses (which are or should be included in most restrictive covenants) much more enforceable. In particular, the Court stated the following:

 First, the plaintiff’s choice of forum merits no weight. . . .

* * *

Second, a court evaluating a defendant’s § 1404(a) motion to transfer based on a forum-selection clause should not consider arguments about the parties’ private interests. . . .

* * * 

Third, when a party bound by a forum-selection clause flouts its contractual obligation and files suit in a different forum, a § 1404(a) transfer of venue will not carry with it the original venue’s choice-of-law rules—a factor that in some circumstances may affect public-interest considerations. 

The impact of the decision on cases involving the attempted enforcement of forum selection clauses in noncompetition agreements arising from an employer-employee relationship will likely be seen in the not-to-distant future.

Consideration for Employee Noncompetes: Not In Illinois

Noncompetition agreements, like all contracts, require consideration. It is generally accepted that when an employment agreement is signed in connection with the commencement of employment, the new job provides the consideration necessary to support the noncompete.

The Appellate Court of Illinois for the First District, First Division, has, however, challenged that view in a decision that the Illinois Supreme Court refused to accept on appeal:  Fifield v. Premier Dealer Services, Inc., 993 N.E.2d 938 (Ill. App. Ct. 2013). Specifically, the court held that, if a new job (i.e., employment) is the purported consideration for a restrictive covenant, then the employment must last at least two years to suffice – even if the employee terminates the employment.

Accordingly, companies hiring in Illinois will, in light of this decision, be well-advised to consider providing additional consideration to employees upon their hiring. What additional consideration will suffice remains to be seen.

Nonsolicitation Does Not Always Require “Solicitation”

It is rare for restrictive covenant cases – especially nonsoliciation cases – to proceed beyond the preliminary injunction stage. And, it’s even more rare for them to make it to an appellate court – especially a federal court of appeals. But, that is precisely what happened in Corporate Technologies, Inc. v. Harnett, 731 F.3d 6 (1st Cir. 2013).

The case involved the question of what constitutes solicitation, an issue that has resulted in many varying decisions over the years.

The First Circuit began its opinion with the following paragraph:

 Businesses commonly try to protect their good will by asking key employees to sign agreements that prohibit them from soliciting existing customers for a reasonable period of time after joining a rival firm. When a valid non-solicitation covenant is in place and an employee departs for greener pastures, the employer ordinarily has the right to enforce the covenant according to its tenor. That right cannot be thwarted by easy evasions, such as piquing customers’ curiosity and inciting them to make the initial contact with the employee’s new firm.  As we shall explain, this is such a case.

Id. at 8.

As the court explained, “[t]he dispute . . . turns on the distinction between actively soliciting and merely accepting business—a distinction that the Massachusetts Appeals Court aptly termed ‘metaphysical.’ Alexander & Alexander, Inc. v. Danahy, 21 Mass.App.Ct. 488, 488 N.E.2d 22, 30 (1986).” Id. at 10. Rejecting the defendant’s argument that the solicitation can only happen if the restricted party initiates the initial contact with the customer, the court stated, “This argument is simply a linguistic trick: creative relabeling, without more, is insufficient to transform what is manifestly a question of fact into a question of law. See Fed. Refin. Co. v. Klock, 352 F.3d 16, 27 (1st Cir.2003).”

The First Circuit’s decision is a significant addition to the body of case law interpreting what constitutes solicitation in the context of nonsolicitation agreements.

What to Watch For in 2014

  • LightLab Imaging, Inc. v. Axsun Technologies, Inc., SJC-11374, is awaiting decision by the SJC. The key issue (disputed by the parties) is whether a court can permanently enjoin the use of trade secrets where the defendant has not used them (and is not likely to use them in future).
  • Hydraulic fracking has been unavoidable in the news.  From a trade secrets standpoint, the tension is the oil companies’ desire to keep their processes secret and conservation and environmental groups’ (among others’) desire to know what is being put into the water supply.  Litigation has recently started over whether the fracking fluids are trade secrets.
  • Continued evolution of the material change doctrine.  It has long been established that a change in position within a company may constitute “a new relationship” necessitating the renewal or replacement of any restrictive covenants entered into in connection with a prior position. The watershed case on this issue is F.A. Bartlett Tree Expert v. Barrington, 353 Mass. 585, 587 (1968).  However, there has been a recent spate of cases involving the doctrine reaching results that are sometimes hard to reconcile. See, e.g., A.R.S. Servs. v. Morse, 2013 WL 2152181 (Mass. Super. Ct. April 5, 2013) (Leibensperger, J.); AthenaHealth, Inc. v. Cady, 2013 WL 4008198 (Mass. Super. Ct. May 2, 2013); Intepros Inc. v. Athy, 2013 WL 2181650 (Mass. Super. Ct. May 5, 2013) (Curran, J.); Akibia, Inc. v. Hood, 2012 WL 10094508 (Mass. Super. Ct. Oct. 9, 2012) (Locke, J.). Perhaps most interesting among them is Interpros, which held that terminating an employee voided the noncompetition agreement (based on the material change doctrine).

New Computer Fraud and Abuse Act Bill

Leave a comment

Last week (on June 20, 2013), Representatives Zoe Lofgren (D-CA), James Sensenbrenner (R-WI), Mike Doyle (D-PA), Yvette Clarke (D-NY), and Jared Polis (D-CO) introduced a new (bipartisan) version of Rep. Lofgren’s prior bill to modify the Computer Fraud and Abuse Act (“CFAA”). The new bill, “Aaron’s Law Act of 2013,” is named for Aaron Swartz (the computer programmer behind RSS and Internet activist who committed suicide in the midst of being prosecuted for allegedly violating the CFAA).

One of the frequently-litigated issues concerning the CFAA is the scope of activity to which it applies. See CFAA: The Wait for the Supreme Court ContinuesAaron’s Law Act of 2013, if passed, would amend the CFAA to legislatively adopt the narrow interpretation of the law.

To do so, the bill would strike “exceeds authorized access” in section 1030(e)(6) (which is the definitional section) and replace it with “access without authorization,” which would be defined to have a three part test. Specifically, it would be defined to mean:  “(A) to obtain information on a protected computer; (B) that the accesser lacks authorized to obtain; and (C) by knowingly circumventing one or more technological or physical measures that are designed to exclude or prevent unauthorized individuals from obtaining that information.”

The bill would then modify the CFAA throughout to replace “unauthorized access, or exceeding authorized access, to a” with “access without authorization of a protected” and to strike “exceeds authorized access.”

Finally, the bill would  eliminate section 1030(a)(4) as redundant (one might question whether it is in fact redundant) and modify the penalties section, with the main goal of making the criminal penalties proportionate the harm caused by the crime.

Given the Obama’s continuing initiative to combat intellectual property theft (see Obama Administration Issues New Strategic Plan for Intellectual Property Enforcement) and the fact that the CFAA has been used more and more in recent years to target trade secrets misappropriation, it will be interesting to see what happens with bill, as it could be viewed by the Obama Administration as counter to its efforts.

Obama Administration Issues New Strategic Plan for Intellectual Property Enforcement

Leave a comment

In February 2013, the Obama Administration issued Administration Strategy on Mitigating the Theft of U.S. Trade Secrets. Part of that plan included the Administration’s solicitation of public comment. I, like a handful of others (13 of us in total), submitted comments. My  summary comments are available here (the PDF at the bottom (and here) has my full submission); links to all 13 submissions are available here.

On Thursday (June 20, 2013), the Obama Administration issued its 2013 Strategic Plan for Intellectual Property Enforcement. As explained by U.S. Intellectual Property Enforcement Coordinator Victoria Espinel, the Strategic Plan “builds on our efforts to protect intellectual property to date, and provides a roadmap for our work over the next three years.”

Ms. Espinel described in her blog how the new Strategic Plan fits in with prior plans as follows:

Since the first Joint Strategic Plan was released in 2010, the Administration has made tremendous progress in intellectual property enforcement. Coordination and efficiency of the Federal agencies has improved; U.S law enforcement has increased significantly and we have successfully worked with Congress to improve our legislation. We have increased our focus on trade secret theft and economic espionage that give foreign governments and companies an unfair competitive advantage by stealing our technology. We have pressed our trading partners to do more to improve enforcement of all types of intellectual property. We have encouraged the private sector to do more on a voluntary basis to make online infringement less profitable as a business, consistent with due process, free speech, privacy interests of users, competition law and protecting legitimate uses of the Internet.

Of particular relevance to trade secrets lawyers, Ms. Espinel focused on legislation as follows: “We will review our domestic legislation to make sure it is effective and up-to-date.”

As many readers of this blog know, there has already been some activity on that front with respect to the Economic Espionage Act and the Computer Fraud and Abuse Act. See here.

Stay tuned for more.

Fairly Competing – A New Podcast

Leave a comment

FairComp LogoI am thrilled to announce that I have been given the opportunity to work with two of my favorite (though far more prolific) bloggers, Ken Vanko and John Marsh, to create a brand new podcast: Fairly Competing, a Competition Law Podcast. It is among the first podcasts devoted to trade secrets, restrictive covenants (noncompetes), and related unfair competition laws.

We have recorded two episodes so far, and will be recording our third soon. We hope to record one every two weeks or so. They will generally last about 20-25 minutes, after the first episode (which was about 40 minutes). The will be available to listen to through the three speakers’ blogs, on iTunes, and on Fairly Competing.

The first episode is an examination of a few of the most significant trade secrets/noncompete/unfair competition developments in 2012 (sort of an abbreviated year in review).

For anyone interested in a more detailed review of the trade secrets developments in 2012, I have provided here my (quite lengthy) materials for the trade secrets portion of this year’s Boston Bar Association’s annual IP Law Year in Review CLE. In addition, both Ken Vanko (here) and John Marsh (starting here) have excellent posts covering similar issues.

The second episode covers the recent prosecution of internet activist and Reddit founder, Aaron Swartz, under the Computer Fraud and Abuse Act (CFAA). We discuss the forces that shaped this tragic case, consider whether changes to the CFAA are needed, and debate whether Silicon Valley Congresswoman Zoe Lofgren’s proposed amendment to the CFAA goes far enough.

The third episode will cover recent and proposed noncompete legislation around the country.

To subscribe to our podcast on iTune, click here.

We hope you will listen and enjoy them as much as we do!

Amazon.com v. Powers’s Lessons for Us All

Leave a comment

GoogleScreen Shot 2013-01-05 at 10.19.17 AMI have at least had a chance to read the December 27, 2012 decision of the United States District Court for the Western District of Washington in Amazon.com v. Powers, granting in part and denying in part Amazon’s request for a preliminary injunction against one of its former executives, Daniel Powers.

The case involves a high level former Amazon employee, Mr. Powers, subject to the typical restrictive covenants (nondisclosure, no-raid, nonsolicitation, noncompete, and invention assignment). Mr. Powers was responsible for sales of Amazon cloud computing services. Mr. Powers was terminated from Amazon and, importantly, took nothing. (This is always best practice for a departing employee.) Nor did he have plans to work elsewhere at the time that he was terminated.

Three months later, Mr. Powers joined Google. Google and Mr. Powers agreed that Mr. Powers would not: refer to cloud computing in his title until the end of 2012 (i.e., about 6 months after his termination); be involved with cloud computing for 6 months (i.e., for 9 months after his termination); use or disclose Amazon’s confidential information; work with Amazon’s customers for 6 months (i.e., for 9 months after his termination); and be involved with the hiring of Amazon’s employees for 12 months from his termination.

Google’s and Powers’ voluntary restrictions were insufficient for Amazon. Amazon sued in Washington state court. Mr. Powers removed the case to the Western District.

The case is interesting for many reasons, including those identified by Ken Vanko in his post on Legal Developments in Non-Competition Agreements. Here are five of the reasons:

First, the Court, somewhat surprisingly, denied Amazon’s request for a preliminary injunction to protect its confidential information.

The Court’s decision in this regard was based on the following factors: (1) Amazon was unable to definitively identify what specific knowledge is “still” in Mr. Power’s memory without discovery, which Amazon declined to do before the preliminary injunction hearing, and (2) Mr. Powers and his new employer (Google) agreed to “virtually every restriction Amazon seeks in its injunction . . . .” The defendants’ voluntary commitment to protect the information was seen by the Court as establishing that Amazon was unlikely to prove that Mr. Powers would use confidential information (even if Amazon had been able to prove that Mr. Powers still remembered confidential information). Factual scenarios like this are quite common and frequently come out the other way, with the Court granting an injunction protecting confidential information.

Second, the Court’s analysis of the lack of proof of trade secrets provides a cautionary tale. Specifically, with regard to the issue of the existence of protectable trade secrets, the Court stated as follows:

Amazon did not ask to file any evidence under seal, suggesting that it believes the court will divine what information is a trade secret from [a] public declaration [of one of its employees]. Having scoured that declaration, the court is unable to do so. The court acknowledges that it is likely that Mr. Powers learned information that would qualify as a trade secret while he was at Amazon. See RCW § 19.108.010(4) (defining trade secret as a information that derives “independent economic value” from being neither known nor readily ascertainable and that is subject to reasonable efforts to maintain its secrecy). But if there is trade secret information that Mr. Powers could still be expected to know, Amazon has not identified it.

The takeaway from that paragraph is to take heed of the seemingly increasing trend of courts (not just in the 9th Circuit) to require early particularization of trade secrets (and, of course, a corresponding willingness to accept the alleged secrets under seal).

Third, the Court deftly avoided deciding whether Washington has or has not recognized the inevitable disclosure doctrine – an area of the law receiving significant attention in many recent decisions. Despite the Court’s avoidance of the issue, it nevertheless made the following cautionary observation (for others to take note of in the future):

Were inevitable disclosure as easy to establish as Amazon suggests in its motion, then a nondisclosure agreement would become a noncompetition agreement of infinite duration. . . . Washington law does not permit that result.

Fourth, the Court’s analysis of the nonsolicitation (of customers) restriction was quite thorough and informative. Specifically, the Court first observed that Washington courts are more apt to enforce a nonsolicitation agreement than a noncompete agreement, because the nature of the restriction on the employee is less severe. However, in shorting to nine months the 18-month stated duration of the restriction, the Court’s analysis was as follows:

This is not a case where Mr. Powers seeks to leap from Amazon immediately to Google with his former customers in tow. He stopped working with Amazon customers more than six months ago. There is no evidence he has had contact with any of them since then. There is no direct evidence that he intends to pursue business with any of them. The only indirect evidence that he has interest in contacting his former customers is that he has chosen to fight Amazon’s efforts to enforce the Agreement. Although the personal aspects of his relationships with his former customers might be expected to endure for more than six months, they might just as well extend even beyond the 18-months that the Agreement provides. Amazon has not explained why it selected an 18-month period, nor has it disputed Mr. Powers’ suggestion that the Agreement he signed is a “form” agreement that Amazon requires virtually every employee to sign. Because Amazon makes no effort to tailor the duration of its competitive restrictions to individual employees, the court is not inclined to defer to its one-size-fits-all contractual choices. Amazon has not convinced the court that the aspects of Mr. Powers’ relationships with customers that depend on confidential Amazon information are still viable today.

The influence that each of those facts (the six month period before Mr. Powers joined Google; his lack of communication; the “evidence” of his interest in contacting the clients; the potential longevity of the client relationships; the “form” nature of the agreement; and the absence of confidential information) had on the Court’s decision should be instructive to those of us facing these issues in Washington (and elsewhere). Each raises all sorts of questions.

Focusing, for example, on the longevity of the relationship as compared with the duration of the restriction. That issue exists not just with customer relationships, but with confidential information and trade secrets protectable through noncompetes. In fact, one of the criticisms of noncompetes is that they are not coterminous with the life of the trade secrets. Good luck to Coca-Cola enforcing a noncompete until the secret formula to Coke is revealed. It won’t happen. Nor, I suspect, would a court refuse to enforce Coca-Cola’s secret formula based noncompete simply because the secret formula would outlive the restriction.

Well, then, why should a nonsolicitation agreement be circumscribed because the goodwill may extend longer than the restriction? While it’s easy to understand modifying (i.e., shortening) the duration when the restriction would outlive its utility, it’s hard to understand shortening it because the restriction isn’t long enough. Does this suggest that the Court would be receptive to a defense in the context of a noncompete on the ground that the trade secrets protected by the noncompete will outlast the restriction, so the restriction is unnecessary? Unclear.

And, fifth, similar to Ken’s point, the Court’s analysis of the noncompete is instructive. The Court reasoned as follows:

Its ban on working with former customers serves to protect the goodwill it has built up with specific businesses. A general ban on Mr. Powers’ competing against Amazon for other cloud computing customers is not a ban on unfair competition, it is a ban on competition generally. Amazon cannot eliminate skilled employees from future competition by the simple expedient of hiring them. To rule otherwise would give Amazon far greater power than necessary to protect its legitimate business interest. No Washington court has enforced a restriction that would effectively eliminate a former employee from a particular business sector. This court will not be the first, particularly where Amazon has not provided enough detail about the nature of AWS’s cloud computing business to convince it that an employee like Mr. Powers can only compete with AWS by competing unfairly.

The two aspects of the decision that seem atypical are that: (1) the Court used the nonsolicitation covenant to undermine the noncompete; and (2) the Court refused – under the particular facts presented – to bar Mr. Powers from a particular business sector. While both can be seen as a mere failing of the sufficiency of Amazon’s evidence, they seem to be more; they seem to suggest an overall reluctance by the Court to enforce noncompete agreements – especially where Washington is a reformation state (meaning that the courts can essentially rewrite a restriction to make it reasonable).

Stay tuned to see how the law develops in Washington (and elsewhere). It should be interesting!

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

Leave a comment

Once again, I am a bit behind on the next installment of Trade Secret | Noncompete Issues and Cases in the News. As a result, there is a lot here! Enjoy…

7th Circuit: The 7th Circuit Court of Appeals issued a decision (Fail-Safe, LLC v. A.O. Smith Corporation) on March 28, 2012 discussing the need to take reasonable measures to protect information that you wish to protect as a trade secret. For a nice discussion of the case, see “Trade Secrets May Be Lost.”

California: On May 14, 2012, the United States District Court for the Eastern District of California issued a lengthy decision (Vance’s Foods, Inc. v. Special Diets Europe Limited) analyzing and finding personal jurisdiction over an Irish company that allegedly misappropriated trade secrets from a company located in California with which it had a contractual relationship. Best practice: Include jurisdiction/forum selection provisions in restrictive covenants (and other contracts). For more on that, see my partner Steve Riden‘s article, “Taking your non-compete from good to great.”

Connecticut: A Connecticut trial court refused to enforce a noncompete against a real estate salesperson on the ground that it was punitive: “Century 21 Access America v. Garcia: Noncompete Clause Unenforceable against Salesperson.”

Delaware: Scott Holt, on the Delaware Non-Compete Blog (Settlement Discussions Not An Excuse for Delayed TRO Application To Enforce Noncompete), discusses a recent Delaware Chancery Court case highlighting the need to move quickly to seek a temporary restraining order or preliminary injunction. In that case, the court concluded that the plaintiff had spent too much time trying to settle, when it should have instead been moving for injunctive relief. It bears mention that while results like this can and do happen, quite frequently courts do come out the other way.

Massachusetts: Several recent cases in Massachusetts are worth noting:

  • Ace Precision, Inc. v. FHP Associates Inc., decided by the Hampden County Superior Court. It’s significant for several reasons. First, it is one of the rare instances in which a noncompete case went to trial. Second, it involved noncompetes arising from the sale of business, which are not frequently litigated. (And it also, of course, involved many of the other claims that typically arise in the context of a suit to enforce a noncompete (e.g., breach of contract, tortious interference, conversion, violation of G.L. c. 93A (the Massachusetts unfair competition statute).) Third, the noncompete expressly precluded enforcement if the buyer (Ace Precision) was in default of its obligations in connection with the acquisition. Fourth, following the trial, the Court found that Ace was in default, and therefore refused to enforce the noncompete without the need to assess the noncompete at all. But more importantly, in a word of caution for others, it issued judgment not only against the plaintiff on all claims, but it found in favor of the defendant on some of its counterclaims.
  • Sentient Jet LLC v. Mackenzie, also decided by the Superior Court (Judge Garsh). David Frank of Massachusetts Lawyers Weekly describes that case (no reported decision) as follows:

The defendant salesmen argued that the clause was unenforceable, relying on the CEO’s departure and the company’s possible purchase by another business as a “material change” in employment.

* * *

[But,] “[t]he prospect of a material change at some indefinite time in the future does not a material change make,” [Judge Garsh] said. “Similarly, the fact that [the plaintiff employer] has changed leadership is not evidence here of the kind of material change from which one would infer that the covenant not to compete was rescinded.”

  • Cesar v. Sundelin, decided by the Massachusetts Appeals Court, holds that a Probate Court judge can, in connection with the division of assets including a family business, impose a noncompete on the spouse that does not receive the business in the divorce. Brian Bialas, who discusses the case on the Massachusetts Noncompete Law blog, provides a copy of the case here.

Missouri: The Missouri Supreme Court, on April 17, 2012, affirmed a verdict of toritious interference when an employee – while still employed – encouraged co-workers to leave the company with no notice at staggered times, all in an effort to wrest control of a significant customer. The case is Western Blue Print Company, LLC v. Roberts. For more details, read my former partner, Peter Steinmeyer‘s post, Missouri Supreme Court Affirms Tortious Interference Verdict Against Manager Who Went To A Competitor.

New Hampshire: Ken Vanko has a nice summary of an unreported case in New Hampshire holding that New Hampshire’s version of the Uniform Trade Secrets Act broadly preempts pre-existing common law claims. Ken’s summary is available here: “New Hampshire Takes Broad View of Trade Secrets Preemption.”

New York: The New York Supreme Court (trial level court) issued a decision (MSCI Inc. v. Jacob) on April 20, 2012 that a trade secret holder has the burden – early in the case – to identify its trade secrets with specificity.

Ohio: The Ohio Supreme Court, on May 24, 2012) issued a decision (Acordia of Ohio, L.L.C. v. Fishel) on an 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. As usual, John Marsh has written a very thoughtful analysis of the case, and provided excellent advice in his post, Acordia of Ohio v. Fishel: Ohio Supreme Court Finds Non-Compete Does Not Survive Merger If It Lacks “Successor or Assigns” Language. For the latest from the First Circuit on this, see the summary (and text) of a recent decision discussed on my firm’s website, under “1st Circuit Decisions on Noncompete Agreements.”

In an interesting, unrelated decision in Ohio, a trial court refused to enforce a noncompete to enjoin a radio personality from hosting an Internet “radio” show (on www.theradiosucks.com). See “Radio station fails in effort to silence ex-hosts.”

Tennessee: Tennessee has, by statutory amendment, changed temporal restrictions on physician noncompetes. For more information, see “Removal of the Six-Year Limitation for Healthcare Non-Compete Agreements in Tennessee.”

Virginia: The United States Court of Appeals for the 4th Circuit, on February 14, 2012, reversed the Eastern District of Virginia in a noncompete case (BP Products North America Incorporated v. Stanley LLC) in which the noncompete arose from a purchase and sale of land. The 4th Circuit concluded that the tougher standards applicable to noncompetes (typically arising in an employment context) were not applicable; the more lenient standards applicable to arms-length transactions should instead apply. For a nice discussion of this, see James Irving‘s newsletter story, Old Law Wins New Case.

Wyoming:  As described by Ken Vanko in “Supreme Court of Wyoming: Continued Employment Is Sufficient Consideration for Invention Assignment Agreement” the Wyoming Supreme Court (in Preston v. Marathon Oil Company) has weighed in on the continuing question of whether continued employment is sufficient consideration to support a restrictive covenant. Interestingly, while finding that continued employment is sufficient consideration for an invention assignment agreement, the rule for noncompete agreements has been (and continues to be) to the contrary in Wyoming (more than continued employment is required for a noncompete).

Criminal:

Related Items of Interest:

  • Also in a similar vein, the FBI has been stepping up its enforcement of trade secret theft – as well as a planned public awareness campaign. See here.
  • Similarly as well, Senator Coons, one of the United States Senators pushing to enhance the relief available under the Economic Espionage Act (discussed here), attended a hearing last month at which he “warned that trade secret theft is a growing problem and, in many cases, is done at the direction of foreign governments. ‘I can tell you,’ Coordinator Espinel responded, ‘trade secret theft is an enormous priority for us, and I think it’s clear that . . . the negative implications for our ability to compete globally when we lose trade secrets . . . are very significant.’” See Senator Coons’s description here.

Older Entries

Follow

Get every new post delivered to your Inbox.

Join 624 other followers

%d bloggers like this: