Trade Secrets

A Practice Note discussing key issues relevant to intellectual property (IP) licensors and licensees affected by bankruptcy. These include issues related to the automatic stay, determining whether an IP license is an executory contract, tests for assignment and assumption of IP licenses and risks and protections for non-debtor licensees of rejected IP licenses.

This Note discusses the main categories of intellectual property (IP) rights in the US and their management, including IP ownership, assignment and licensing.  It also examines the issues that arise surrounding business transactions involving IP, including M&A and finance transactions as well as their basic tax treatment under federal law. 

An overview of special issues and considerations with respect to security interests in intellectual property, relevant to both corporate and finance transactions.

A Note discussing trade secrets litigation for employers whose employees have misappropriated trade secrets. It describes pre-litigation investigation, sending cease and desist letters and contacting law enforcement. It also addresses filing a legal action, including choice of forum and choice of law, deciding whether to include the employee's new employer and third parties, common causes of action, discovery, injunctive relief, damages and attorneys' fees. It includes best practices for preparing to counter potential defenses and counterclaims and maintaining confidentiality during litigation.

A standard form of unilateral confidentiality agreement to be used in connection with commercial transactions, drafted with terms favorable to the party disclosing confidential information. This Standard Document has integrated notes with important explanatory drafting and negotiating tips.

A standard form of confidentiality agreement to be used in connection with an acquisition. This Standard Document has integrated notes with important explanations and drafting and negotiating tips.

A standard form of confidentiality agreement (also known as a non-disclosure agreement) for a joint venture, where both parties are disclosing information about businesses to be contributed to the joint venture. This document is in the form of an agreement rather than a letter. It has been adapted from PLC's UK version to provide a plain English, jurisdiction-neutral starting point for local counsel to adapt for use in cross-border transactions. The document has integrated notes discussing the key legal, negotiating and drafting issues.

A California-specific agreement between an employer and an employee concerning confidentiality and appropriate handling of the employer's commercially valuable information, compliance with relevant security rules and policies, and protection of the employer's intellectual property assets. Agreements of this type have various titles, which may use the term "non-disclosure" in place of "confidentiality," or "intellectual property" in place of "proprietary rights." This Standard Document is drafted in favor of the employer. It is based on California law. This Standard Document has integrated notes with important explanations and drafting tips.

Standard Clauses setting out the confidentiality obligations of a party in a sale of goods or services transaction. These Standard Clauses include a detailed definition of confidential information, standard exceptions to the definition of confidential information, common confidentiality obligations of a receiving party, and language addressing disclosures of information as required by law. This resource also includes optional language addressing the return or destruction of confidential information, as well as equitible remedies for any breach of confidentiality. These Standard Clauses have integrated notes with important explanations and drafting tips.

A Checklist outlining best practices for employers drafting employee confidentiality agreements, sometimes referred to as confidentiality and proprietary rights agreements. This Checklist is jurisdiction neutral.

A Checklist outlining steps employers can take at the beginning of the employment relationship to avoid potential claims from former employers for theft of trade secrets and unfair competition, and to protect the new employer's confidential, proprietary and trade secret information.

A Q&A guide to state law on trade secrets and confidentiality for private employers in Arizona. This Q&A addresses the state-specific definitions of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Colorado. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to trade secrets and confidentiality law for private employers in the District of Columbia. This Q&A addresses the District of Columbia definition of trade secrets and the legal requirements related to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Georgia. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Illinois. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Iowa. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Kentucky. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Maryland. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool). For a recent update on Maryland's new User Name and Password Privacy Protection and Exclusions law, see Related Content on the right.

A Q&A guide to state law on trade secrets and confidentiality for private employers in Michigan. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Mississippi. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Nevada. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in New Jersey. This Q&A addresses the state-specific definitions of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in North Carolina. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Oklahoma. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Pennsylvania. This Q&A addresses the state-specific definitions of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Tennessee. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Utah. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Washington. This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them. Federal, local or municipal law may impose additional or different requirements. Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

A Q&A guide to state law on trade secrets and confidentiality for private employers in Wisconsin.  This Q&A addresses the state-specific definition of trade secrets and the legal requirements relating to protecting them.  Federal, local or municipal law may impose additional or different requirements.  Answers to questions can be compared across a number of jurisdictions (see Trade Secret Laws: State Q&A Tool).

On May 2, 2013, Texas became the 48th state to adopt the Uniform Trade Secrets Act (UTSA). The Texas Uniform Trade Secret Act takes effect on September 1, 2013 and replaces existing Texas law governing trade secrets. 

President Obama signed the Theft of Trade Secrets Clarification Act of 2012, which clarifies that the scope of the Economic Espionage Act of 1996 covers products and services used or intended for use in interstate commerce or foreign commerce.

This Law Firm Publication by Epstein Becker & Green, P.C. discusses SASCO v. Rosendin Electric, Inc., in which the California Court of Appeal, Fourth Appellate District, affirmed the trial court's order awarding attorneys' fees to the defendants after concluding the plaintiff engaged in bad faith. The trial court found that there was no evidence of misappropriation of trade secrets and the plaintiff's continued prosecution without evidence of actual misappropriation constituted subjective bad faith. 

On April 11, 2012, the US Court of Appeals for the Second Circuit issued its opinion in US v. Aleynikov holding that Sergey Aleynikov, a computer programmer who stole valuable and confidential source code from his employer, Goldman Sachs, did not violate the National Stolen Property Act (NSPA), the Economic Espionage Act of 1996 (EEA) or the Computer Fraud and Abuse Act (CFAA).

In Aqua Connect, Inc. v. Code Rebel LLC, the US District Court for the Central District of California dismissed a remote-access software company's claim that one of its customers violated the California Trade Secrets Act (CTSA) when it downloaded and reverse engineered a trial version of the company's software. The court emphasized that CTSA's definition of "improper means" trade secret misappropriation specifically states that reverse engineering alone is not an improper means of acquiring trade secret information. The court rejected the software company's argument that the prohibition on reverse engineering in its End User License Agreement (EULA) made the activity an improper means of obtaining the trade secret information. The court also rejected the software company's argument that its EULA created a duty for its customers to maintain the secrecy of company trade secrets.