New Federal Trade Secret Act Takes Effect

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John M. Conley
Robinson Bradshaw Publication
July 19, 2016

On May 11, 2016, a new federal trade secrets law called the Defend Trade Secrets Act took effect. Its primary effect is to allow the victims of trade secret misappropriation to sue in federal court. It also provides some new civil remedies that exceed what is usually available under state law. The DTSA will be slotted into the U.S. Criminal Code (chapter 90 of Title 18), which already makes industrial espionage and trade secret theft a federal crime. In terms of what companies have to do to comply, the answer is almost nothing—the sole exception being a change in future employee contracts that is discussed below. 

Until now, civil trade secret protection has been entirely a matter of state law. The law is very consistent from state to state, as 47 states have enacted the Uniform Trade Secrets Act. The exceptions are New York, Massachusetts and North Carolina, though the North Carolina statute is generally similar to UTSA. Enforcement actions must usually be brought in state court, though federal courts can take jurisdiction if the plaintiff and defendant are citizens of different states. Even then, however, the federal court must apply state in law in deciding the case.

What Stays the Same and What’s Changed

One thing that the new federal law does not do is change the basic definition of what a trade secret is or what kinds of conduct constitute prohibited misappropriation. The DTSA tracks the UTSA in defining a trade secret very broadly to include any form of information or know-how that is valuable because it is not generally known or readily ascertainable, and that is the subject of reasonable efforts to maintain secrecy. The Coke formula is perhaps the most famous trade secret in this country. Under state law, misappropriation means acquiring, disclosing or using a trade secret in violation of a duty of confidentiality, whether that duty was created expressly (a confidentiality agreement, for example) or inferred from the circumstances (for example, a meeting that everyone should have understood to be confidential), or through other improper means, such as industrial espionage. The DTSA’s definitions are a bit circuitous but amount to essentially the same thing.

The first big change made by the DTSA is to allow the filing of a trade secret misappropriation case in federal court, regardless of the state citizenship of the parties, as long as the trade secret is used in or is intended for use in interstate commerce. (Since the new federal law is intended to add to rather than displace state law, a plaintiff can file a DTSA claim in federal court and add a second claim under state trade secret law.) There are many significant differences between federal and state court litigation. Federal judges are appointed for life by the president, whereas judges are elected in many states (including North Carolina), and thus potentially more responsive to public opinion, which can be a good or bad thing, depending on the case and the perspective of the litigant. A single federal judge usually handles all aspects of a case from start to finish, while state cases can bounce around, with different judges deciding different issues. Also, federal courts have more onerous brief-writing requirements, which usually makes federal litigation more expensive but also tends to make federal judges better informed about their cases than their state counterparts. Finally—and importantly—federal judges have abundant help from law clerks (recent law school graduates) in preparing for arguments and trials, whereas state judges typically have limited assistance from clerks. These factors often make federal courts a more attractive forum for lawyers and clients filing cases involving complex technology.

The second change is the addition of an important new remedy—civil forfeiture. In state law trade secret cases, the most important remedy is often a preliminary injunction (PI). An injunction is an order that compels a defendant to do or refrain from doing something—in this context, an order to return documents, or not to use a trade secret, or not to work in a new job or make a product if the judge thinks it will result in misuse of a trade secret. Preliminary means that the injunction is granted before trial, on the basis of the judge’s assessment of preliminary evidence, and that it will be in effect only through the end of the trial. Permanent injunctions can then be granted if the plaintiff wins at trial.

A frequent problem with PIs from the plaintiff’s (victim’s) perspective is that they can be difficult to frame in an effective way. By the time the PI application is heard, a lot of the trade secret toothpaste may have been squeezed out of the tube, and it is hard to shape an order that will get it back in. The new civil seizure remedy attempts to mitigate these shortcomings. It is specifically addressed to situations where traditional injunctions would be inadequate. In extraordinary circumstances, a plaintiff can apply without giving notice to the other side. The plaintiff must persuade the judge that it is likely to prevail on its ultimate claim and that seizure is necessary to protect the trade secret. The judge can then order a federal law enforcement officer to seize (using force, if necessary) and secure tangible property and electronic media that embody the trade secret.

To protect the defendant, the seizure order must be very specific and the court must hold a hearing on the seizure within seven days after the order is issued. The defendant is entitled to protection against publicity and can seek to recover damages if it turns out that the seizure was unwarranted. Notwithstanding these protections, the threat—and reality—of a seizure order are powerful weapons in the hands of a trade secret plaintiff. In addition, the DTSA provides for double damages and attorneys’ fees against willful violators. Attorneys’ fees can also be awarded to successful defendants if the court decides that the plaintiff has acted in bad faith. Overall, these new remedies tip the balance significantly in favor of the plaintiff in federal versus state trade secret actions.

The New Notice Requirement

In terms of actions required to comply with the DTSA, the single significant thing is notifying employees (broadly defined to include consultants and contractors as well) of their rights to immunity in certain situations. The new law provides immunity for an individual who discloses a trade secret to a government official or attorney, for the purpose of reporting a violation of law, or in a court filing made under seal. Similar immunity attaches to the use of a trade secret by an employee in a suit against an employer that tries to retaliate against the employee for disclosing a suspected violation of law.

The DTSA requires companies to provide notice of this immunity “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” This requirement applies only to contracts that are entered into or updated after the DTSA took effect (May 11, 2016). Preexisting contracts are unaffected. The penalty for failure to give notice is fairly modest: the employer loses only its right to seek double damages or attorneys’ fees in a suit against the employee who did not get the notice. The employer does not lose its trade secret, and it can still seek civil seizure, an injunction or single damages against that employee, as well as any state law remedy that might be available. The failure to give notice to a particular employee has no bearing on suits against other defendants.

Practical Points

Here are the main practical points for companies to keep in mind as the DTSA takes effect:

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