Professors Invent Threat of “Trade Secret Trolls”

I’ve written several times in the past about the proposed legislation to create a federal cause of action for trade-secrets misappropriation (see herehere, and here). I also wrote a response to a letter signed by a number of professors who opposed this legislation. Now, Professors David S. Levine and Sharon K. Sandeen have written a law review article titled “Here Come the Trade Secret Trolls.” This article misses the mark by a mile.

Here is the article’s core argument:

The [proposed federal] Acts are most likely to spawn a new intellectual property predator: the heretofore unknown “trade secret troll,” an alleged trade secret owning entity that uses broad trade secret law to exact rents via dubious threats of litigation directed at unsuspecting defendants.

The use of the term “troll” is meant to evoke patent trolls, who have been the subject of much scorn. But the so-called “trade secret troll” is far different than a patent troll. The latter actually own patent rights, which they wield to seek licensing fees. The article’s mythical trade-secret troll is simply someone willing to bring a frivolous lawsuit to extort an undeserved settlement. I suspect the authors chose this term to piggyback on the negative attention heaped on patent trolls, thereby arming the legislation’s opponents with a pejorative term that may scare legislators or their constituents.

Putting titles aside, the article can’t reconcile its core argument with the fact that, as the authors acknowledge, “trade secrecy has been generally free of similar trolling behavior.” In other words, there is no epidemic of frivolous trade-secret lawsuits under the current state-law framework. (Certainly, there are weak misappropriation cases, just like with any cause of action. But I haven’t seen any evidence to suggest that such cases are disproportionately filed.)

The authors try to make the point that the proposed federal acts would transform trade-secrets law such that threatening and filing frivolous lawsuits would become commonplace. Yet the article does not really explain why this is so. It gets closest when discussing the proposed ex parte seizure provisions. But as I mentioned in my response to the professors’ letter, this risk is highly overblown. Convincing a federal judge to enter ex parte relief is no simple matter. And the defendant will have the right to challenge any seizure order very soon after its entry. Federal judges will not be amused if they have been manipulated into entering unnecessary ex parte orders.

The article fears that “trolls” will be able to threaten an ex parte seizure, which will be sufficient to scare a defendant into paying up before the suit is filed. Yet any innocent defendant will know that the likelihood of such an order being entered is slim. Further, simply sending the letter would undermine an attempt to get an ex parte seizure order. If the plaintiff was able to send a demand letter, thereby putting the defendant on notice of the possible claim, then a judge would be highly skeptical of a claimed need for an ex parte order.

The article also argues that unsettled interpretative questions relating to the acts will fuel frivolous lawsuits. But the article forgets that creating a federal cause of action will quickly lead to a much more robust body of published caselaw interpreting the statute. While there are very few published trial-court-level decisions in state courts, U.S. district court orders are widely available.

Frankly, state courts are much more susceptible to frivolous trade-secrets suits than federal courts. Take Florida, for example. Here, state court judges have to deal with remarkably bloated dockets. In fact, I’ve had multiple cases where it took months to get an emergency injunction hearing. State-court judges generally don’t have law clerks. And in Florida, judges often rotate between civil, criminal, family, and dependency divisions. This latter point is critical: judges often don’t spend enough time in the civil division to develop a familiarity with trade-secrets law. All of these issues lead to uncertainty, which would seemingly aid the unscrupulous litigant looking to extort a settlement. Yet, as the authors themselves acknowledge, we simply have not seen this so-called trolling.

There’s no question that frivolous lawsuits would be filed under the proposed federal legislation, just as like every other cause of action. But there is absolutely no credible reason to believe that such suits can’t be remedied with the typical mechanisms deigned to ferret out meritless claims, like Rule 11 motions.

As I’ve argued in the past, the proposed legislation has tangible benefits that aid trade-secrets owners in protecting their critical proprietary information. The arguments lobbed up in opposition—including the manufactured risk of “trolling”—don’t hold up to careful scrutiny.

“Shark Tank” Shouldn’t Forget About Trade Secrets

I recently started watching Shark Tank on CNBC. For those who haven’t seen it, the concept is simple: entrepreneurs pitch “sharks”—prominent wealthy investors like Mark Cuban—in an effort to win funding, usually in exchange for equity in the company.

In the episodes I’ve seen thus far, many of the entrepreneurs are pitching companies that sell a single product. Inevitably, the sharks ask whether the company holds a patent. For those products that can be reverse engineered, that’s obviously a critical question. But I’ve noticed that the sharks don’t ask about trade secrets.

For example, I watched one episode where the entrepreneurs sold a disposable, single-use wipe that was designed to clean heavy grease. It was similar to the wet naps you get at a BBQ restaurant. They pitched it as a product to keep in your car. One of the sharks, “Mr. Wonderful,” wanted to know if they had a patent. When they said they did not, Mr. Wonderful decided not to invest.

Even without a patent, this company could have valuable trade secrets. For example, the wipes used concentrated citrus oil. It’s entirely possible that the company’s oil formula could be protected as a trade secret.

Companies need to be aware whether their proprietary information can qualify as a trade secret. That way, the company can take the actions necessary to protect that information. And when trying to raise funding, those trade secrets can be featured, alongside (or in lieu of) the company’s patents. Of course, make sure that the potential investors sign a nondisclosure agreement before providing them with nonpublic details about the trade secrets.

Are Your Smartphone Apps Leaking Your Trade Secrets?

As the online world shifts increasingly to mobile devices, new and unexpected threats to your company’s proprietary information emerge. Many apps on your smartphone contain in-app internet browsers. For example, when you open the twitter app, you can click on links within tweets, which you will then view in twitter’s in-app browser.

This blog post by web developer Craig Hockenberry shows that in-app browsers on iPhones and iPads have a serious security flaw: the app can record your keystrokes. Thus, any sensitive information entered in the in-app browser can be recorded by the app. So, for example, if one of your employees uses an in-app browser to send an email containing your proprietary information, that information could be at risk.

Hockenberry has a simple recommendation for avoiding this problem:

You should never enter any private information while you’re using an app that’s not Safari. An in-app browser is a great tool for quickly viewing web content, especially for things like links in Twitterrific’s timeline. But if you should always open a link in Safari if you have any concern that your information might be collected. Safari is the only app on iOS that comes with Apple’s guarantee of security.

Problems like this are hard to predict, since technology is changing so rapidly. The best way to avoid unexpected security risks is to implement a trade-secrets policy that restricts the manner in which your proprietary information can be circulated.

Can Mark Cuban’s Cyber Dust Help Protect Proprietary Information?

Cyber Dust is an app that lets users send text messages without leaving a digital fingerprint. All texts “self destruct” within 30 seconds, after which they are not stored anywhere — including on Cyber Dust’s servers. Also, Cyber Dust notifies you if someone takes a screenshot of one of your Cyber Dust texts.

Mark Cuban is behind Cyber Dust. In a recent Forbes article, he explained that the idea came from his own experience of having the SEC use his text messages in its insider-trading action against him: “That the phone companies and your text recipients own your texts and even the most innocent text can take on a whole new context. I wanted to have a means of communication that is analogous to face to face – where you can speak openly and honestly. That is why we created Cyber Dust.”

Similar technology is being developed for emails. For example, The Atlantic recently wrote about Pluto Mail, which includes features that allow the sender to set an email to expire after a set time. After that, the recipient can no longer view the email.

As Cuban notes, emails and texts create a digital record that can last forever. When your employees (or others, like consultants or vendors) send emails and text messages that contain your proprietary information, there is a risk of disclosure. As more companies use bring-your-own-device policies, those companies lose even more control of information sent via text and email.

I’ve been thinking of how to use this technology to minimize unwanted disclosure. For example, a company could require that all work-related text messages be sent via Cyber Dust. Emails are a bit more complicated, since there is often a need to preserve emails for later use. But a company could require that all emails containing proprietary information, or attaching certain proprietary documents, be sent with a scheduled expiration date.

In the end,  these policies would only be effective if there’s a way to monitor compliance. Otherwise, it’s not worth the effort. Also, these policies likely would not deter someone who is sending the information with malicious intent, such as an employee who knows he will be leaving to work for a competitor. UPDATE: In fact, such a person could use this technology to cover his tracks.

But it’s worth exploring how to use new technology like Cyber Dust to help bolster efforts to protect proprietary information.

Slightly Off Topic: Major Opinion Changes the Standard for Unfair Trade Practices Claims in Florida

I’m going to take a brief detour from trade-secrets issues today, and instead wander in to the world of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA). This statute, like many state consumer-protection laws, prohibits unfair trade practices, among other things.

Prior to this week, Florida courts have defined an unfair trade practice as one that is immoral, unethical, oppressive, unscrupulous, or substantially injurious to consumers. (The definition of consumer includes just about all individuals and business entities.) This broad standard allowed FDUTPA to serve as the Swiss Army Knife of claims, since it could apply to diverse types of bad acts. For example, I obtained a judgment for violating FDUTPA where my client’s former independent contractor started a competing business using my client’s proprietary information. (So there’s at least some connection between FDUTPA and trade secrets, since FDUTPA claims could be brought in a misappropriation action.)

But this week, in Porsche Cars North America, Inc. v. Peter Diamond, Florida’s Third District Court of Appeal changed the standard. Now, an unfair trade practice is one that causes injury to a consumer that (1) must be substantial, (2) must not be outweighed by any countervailing benefits to consumers or competition that the practice produces, and (3) must be an injury that the consumers could not reasonably have avoided.

This revised definition, and the third prong in particular, will make it more difficult to bring unfair-trade-practice claims.

As a result of this decision, there is now a district split on this issue. It will be interesting to see if this case gets appealed, and if so, whether the Florida Supreme Court settles the issue.

In Defense of the Defend Trade Secrets Act

In my last post, I discussed the recently proposed, bipartisan Defend Trade Secrets Act that would create a federal cause of action for trade-secret misappropriation. I wrote favorably about the statute’s mechanism allowing a judge to enter an ex parte order to preserve evidence. Since then, I’ve discussed this provision with several people who have concerns about it. This post responds to these criticisms.

To start, I want to explain why this provision is so important. Trade-secret theft is overwhelmingly accomplished by electronic means, such as through email, downloading to portable media, or via remote access to IT systems. Companies suspecting trade-secret theft can often determine where and how the information was stolen. For example, forensic techniques can identify that certain documents were saved to a flash drive on a specific date.

The Defend Trade Secrets Act permits the company, armed with this information, to seek an order requiring seizure or preservation of the media/computer/etc to which the information was downloaded. As a result, critical evidence that could otherwise easily be destroyed would be preserved. Without a statutory provision specifically authorizing this remedy, most litigants find it very difficult to convince a judge to enter this type of order.

I’ve heard concerns about the risk that judges will improvidently grant ex parte seizure orders brought in bad faith by unscrupulous litigants, potentially causing significant unjustified damage to defendants. This risk, while real, is present any time a judge hears an ex parte motion for temporary restraining order. The overwhelming majority of judges are reluctant to enter an ex parte injunction unless absolutely necessary. And this statute contains requirements that make it materially more difficult to get a seizure order as compared to a TRO.

In particular, the Defend Trade Secrets Act borrows from the Trademark Act’s procedure for seizing goods containing counterfeit trademarks. These requirements go beyond the typical TRO prerequisites. For example, the movant must show evidence that the item to be seized will be in a certain location. The court must also take measures to protect the defendant from publicity regarding the seizure. Further, the order directing seizure remains sealed until the defendant has an opportunity to contest it at a hearing that must occur within 15 days of entering the ex parte order. And as a final example, the statute provides for damages, including punitive damages, if the defendant is damaged by the wrongful entry of a seizure order.

These protections go a long way to minimize the likelihood that orders are improperly entered. In the end, the benefit of avoiding destruction of evidence—which happens all too frequently—outweighs the risk of unwarranted orders, particularly given the statute’s protections.

New Year, New Trade-Secrets Issues

Now that New Year’s is behind us, companies face one of the riskiest times of the year for protecting their trade secrets and proprietary information.

As I’ve discussed in the past, employee departures present perhaps the greatest risk of unwanted trade-secret disclosure. And many employees who want to leave wait until after they receive their year-end bonus. With this increased employee movement comes an increased risk of misappropriation.

This is a great time of year to review employee intake and exit procedures. Departing employees need to be made aware of their legal obligations regarding the company’s proprietary or confidential information. This is best done through an exit interview. Whenever possible, a departing employee should sign an acknowledgement of her obligations.

During the exit interview, the company should learn as much as possible about where the employee will be working next. This helps identify situations where proprietary information is at risk. In such situations, an attorney should be consulted. For more details about exit interviews, see this prior post.

Similarly, when hiring new employees, companies need to make sure the new employees will not be violating any restrictive covenants signed with former employers. During the hiring process, potential new hires need to be asked directly whether they have signed any such agreements. And once hired, they should confirm this in writing. If a company wants to hire someone who signed a restrictive covenant with a former employer, the company must consult with an attorney first.

If the new employee will be bound by a restrictive covenant such as a noncompete, make sure it is actually signed. (This may seem obvious, but it’s not uncommon for a noncompete agreement to go unsigned.)

By improving employee intake and exit procedures, companies can significantly reduce the risk of trade-secret misappropriation and expensive litigation.

Announcement: The Trade Secrets Law Blog Is Now Called “Protecting Trade Secrets”

I’m making some changes around here, starting with the blog’s new title: Protecting Trade Secrets. That’s the blog’s purpose, and now that’s the blog’s title.

Also, the blog can now be found at www.protectingtradesecrets.com, as well as the old url of www.tradesecretslaw.wordpress.com. In the near future, I’m going to be transitioning the blog entirely to the protectingtradesecrets.com url. Say tuned!

Welcome to the Trade Secrets Law Blog!

Hello there. In this blog, I hope to provide information about and insight into protecting trade secrets and proprietary information. I will discuss legal developments, including court decisions addressing the Uniform Trade Secrets Act, common-law trade-secret protections, and related topics such as noncompete agreements. I will also address practical issues companies face, and offer advice and guidance.

To give a bit of background, I am an attorney at the law firm of Meland Russin & Budwick, P.A. in Miami. I am a business litigator, with a focus on helping companies protect their trade secrets and proprietary information. I work with companies to identify their trade secrets and keep them secure. I also represent companies in trade secret, noncompete, and general business litigation.

I welcome any questions, comments, or suggestions; I can be reached at eostroff@melandrussin.com, TradeSecretsLawBlog@gmail.com, or (305) 358-6363.

Stay tuned…

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