Eleventh Circuit: When It Comes to Injunctions, It’s Now or Never

Guest post by Solomon B. Genet

Recently, on October 28, the 11th Circuit Court of Appeals in Wreal, LLC v. Amazon.com, Inc. affirmed the time-honored principle of “you snooze, you lose.”  In summary, a plaintiff believed that his trademark was being infringed upon, but waited 5 months after filing suit to seek a preliminary injunction. The 11th Circuit affirmed the district court’s denial of that request, finding that the delay undermined any showing of irreparable injury.

Seemingly having fun with the decision, the 11th Circuit explained:  “The district court denied the injunction because, among other reasons, the plaintiff pursued its preliminary injunction motion with the urgency of someone out on a meandering evening stroll rather than someone in a race against time.”  A PDF of the opinion can be downloaded below.

Practice tip: don’t stroll but RUN to the court to seek an injunction. This is particularly important in trade-secret cases, where judges will be very skeptical of a plaintiff who knowingly delayed in pursing an injunction.

Wreal, LLC v. Amazon.com, Inc.

President Obama: Most Workers Should Not Sign Non-Compete Agreements

Yesterday, the White House issued a State Call to Action on Non-Compete Agreements. This follows the President’s April 15, 2016 Executive Order that addressed steps to protect workers and increase competition.  The President’s position is clear: “Most workers should not be covered by a non-compete agreement.” Instead, non-competes should be “the exception rather than the rule.” Meanwhile, “there is gross overuse of non-compete clauses today.”

This Call to Action encourages states to implement certain policy objectives regarding non-competes, including:

  1. Banning non-competes for workers (a) under a certain wage threshold, (b) in occupations that promote public health and safety, (c) unlikely to possess trade secrets, or (d) laid off or terminated without cause.
  2. Increasing the transparency and fairness of non-competes such as by requiring disclosure of the agreement prior to acceptance of a job or promotion and mandating consideration in addition to continued employment.
  3. Encouraging employers to write enforceable contracts, such as by promoting the “red pencil doctrine,” under which non-compete agreements with unenforceable provisions are void in their entirety.

President Obama is right: non-compete agreements are overused. For example, as noted in this article discussing the Call to Action, 20% of U.S. workers are bound by non-competes, including 14% of workers earning less than $40,000 per year. While there may be exceptions, most of these lower-income workers should never have been required to sign a non-compete.

At the same time, companies need to be able to protect their trade secrets and proprietary information. Thus, non-compete agreements are absolutely appropriate in many circumstances. This requires a case-by-case analysis. The more senior the employee, and the more access the employee has to proprietary information, the more likely a non-compete is appropriate. When making this determination, companies need to resist using a one-size-fits-all approach to restrictive covenants. Often, less onerous measures like non-solicitation and non-disclosure agreements will be sufficient to protect the company. Particularly for lower-level employees.

There is room for common-sense legislation to protect vulnerable workers from non-compete agreements. Too many companies force non-competes on lower-level workers, without regard for whether the company needs that level of protection. But I would not go as far as the Call to Action suggests. Instead, I favor implementing a rebuttable presumption that an employer does not have a legitimate business interest justifying a non-compete agreement when the employee makes under a certain amount per year, say $40,000. I would not apply this presumption to non-solicitation or non-disclosure agreements.

Almost 6 Months In, What Have We Learned About the Defend Trade Secrets Act?

Now that almost six months have passed since President Obama signed the Defend Trade Secrets Act (DTSA) into law, let’s take a look at what we’ve learned about the statute thus far.

  1. The fuss about ex parte seizures was overblown. Prior to the statute’s enactment, opponents were concerned about misuse of the DTSA’s ex parte seizure remedy. But so far, problems have not materialized. There have not been any reports, at least to my knowledge, of an ex parte seizure being reversed once the defendant had an opportunity to respond. In fact, I’m only aware of one case involving an ex parte seizure order, discussed here, and the judge denied that request.
  2. The DTSA can apply to misappropriation that stared pre-enactment. Even though the statute expressly applies solely to actions occurring after enactment, several courts have interpreted the act to cover pre-DTSA misappropriation. But only if the misappropriation continued after the statute’s enactment. I wrote about one such case from the S.D.N.Y. here. The Middle District of Florida reached the same conclusion in Adams Arms, LLC v. Unified Weapon Systems, Inc., Case No. 8:16-cv-1503-T-33AEP.
  3. Courts analyze DTSA and state-law trade-secrets claims together. Both types of claims are grounded in similar concepts, so it is hardly surprising that courts analyze the claims together, while applying similar reasoning to the two statutes. For example, in M.C. Dean, Inc. v. City of Miami Beach, Florida, Case No. 16-21731-CIV-ALTONAGA, the Southern District of Florida dismissed claims under both the DTSA and Florida’s Uniform Trade Secret Act, after discussing the two claims together.

So far, there have not been many reported decisions interpreting the act. A Westlaw search for “Defend Trade Secrets Act” yields only 14 results. I will continue to monitor decisions addressing the DTSA and provide regular updates as the statute matures.

S.D.N.Y. Applies Defend Trade Secrets Act to Conduct Predating the Statute

The Defend Trade Secrets Act (DTSA), signed into law by President Obama on May 11, 2016, applies “to any misappropriation of a trade secret . . . for which any act occurs on or after the date of the enactment of this Act.” 18 U.S.C. 1836(e). On its face, this would seem to preclude actions based on misappropriation that occurred prior to the DTSA’s enactment. But a recent case from the Southern District of New York shows that it’s possible to sue under the DTSA based on conduct predating the statute’s enactment.

In Syntel Sterling Best Shores Mauritius Limited v. TriZetto Group, Inc., the plaintiff, a healthcare software company, sued a company that previously contracted with the plaintiff to provide software development and other services. According to the plaintiff, after the defendant terminated the parties’ master services agreement, the defendant accessed and downloaded the plaintiff’s confidential documents and used that information to pitch clients. The plaintiff sued for violations of the DTSA, among other claims.

The defendant moved to dismiss, arguing that the amended complaint alleged pre-DTSA conduct. The court rejected this argument:

The plain language of the Act defines misappropriation to include “disclosure or use of a trade secret without the consent of another.” 18 U.S.C. 1839(5) (emphasis added). Accordingly, as Defendants allege that Syntel continues to use its Intellectual Property to directly compete with Trizetto, the wrongful act continues to occur after the date of the enactment of DTSA.

Thus, according to the Southern District of New York, a plaintiff can bring a claim under the DTSA for using a trade secret prior to the DTSA’s enactment, as long as the use continues post-enactment.

Takeaway: Companies who discover misappropriation that began before May 11, 2016 need to investigate whether the defendant continues to use the trade secrets at issue. If continued use can be alleged in good faith, consider bringing a claim under the DTSA.

Syntel v. TriZetto

Protecting Trade Secrets Following an M&A Transaction

Many M&A transactions are motivated by a desire to acquire another company’s trade secrets. But the unique nature of trade secrets, as compared to other types of intellectual property, creates risks for the acquiring company.

For example, a company doesn’t know if its proprietary information is a trade secret until a judge says so, usually in the context of a misappropriation claim. If the acquired trade secrets are stolen after the M&A transaction, this determination will involve a judge’s analysis of how the target company protected the information at issue prior to the transaction.

I recently came across a case from the Northern District of Georgia, DS Waters of America, Inc. v. Fontis Water, Inc., that shows how this can play out. A copy of the opinion is linked below. DS Waters, the company behind Crystal Springs bottled water, acquired the assets of a bankrupt water company, including its customer list. In this case, DS Waters brought a claim under the Georgia Trade Secrets Act alleging misappropriation of the customer list.

The defendants argued that because the bankrupt company did not reasonably protect the customer list, the list is not a trade secret. The case ultimately settled. But if it hadn’t, a jury would have decided whether the bankrupt company took appropriate protections. If not, then DS Waters would have paid for a customer list that it cannot protect as a trade secret.

This highlights the need for in-depth due diligence into the target company’s trade secrets, with a focus on the protections used. These tasks are often farmed out to junior lawyers, who may not have sufficient familiarity with the way courts analyze reasonable protections in misappropriation cases. Resist the temptation to reduce costs by having inexperienced lawyers handle this aspect of the due diligence.

Instead, whenever you are involved in an M&A transaction in which there is value assigned to trade secrets, you should engage an attorney who is an expert in this area who can determine whether the target company’s protection efforts are likely to survive judicial scrutiny. Otherwise, you are taking a substantial risk that the assets you are purchasing cannot be protected as trade secrets.

DS Waters v. Fontis Water

5 Warning Signs That Your Trade Secrets Have Been Stolen

Many companies that suffer trade-secret theft have no idea for months, if not longer. In the meantime, these companies often suffer substantial damage. Effective trade-secrets protection thus requires more than just proactive measures, such as restrictive covenants. Active monitoring is necessary to determine whether former employees, business partners, etc. are engaged in misappropriation.

Obviously, someone who is illegally using your trade secrets will try to keep their activity hidden. As a result, misappropriation can be difficult to detect. But there are warning signs. Here are five common red flags:

  1. A new competitor emerges. If a new competitor appears in your industry, investigate whether any of your former employees or business partners is involved. Particularly if there are high barriers to entry in your industry. This usually requires in-depth investigative work, which may require outside counsel, since the bad actors will try to hide their involvement.
  2. Your former employee lied. Hopefully, you’re conducting exit interviews when  employees leave your company. During that interview, ask where the employee will be working next. If he or she ends up at a competitor instead, there’s reason for concern.
  3. Data was downloaded. Whenever an employee with access to your proprietary information and trade secrets leaves, work with your IT department to determine whether there was any unusual downloading or exporting of key documents or information leading up to the employee’s departure.
  4. A business partner terminates an agreement unexpectedly. If your business partner had access to your trade secrets, be wary if they unexpectedly terminate what seemed like a mutually beneficial relationship.
  5. Clients leave suddenly. If one of your key sales/customer-relations employees leaves, keep an eye on the clients they worked with. If those customers take their business to your former employee’s new company, you have a problem.

Some of these may seem obvious, but companies are often so focused on their day-to-day business that they miss these warning signs. If you encounter any of the above, or there’s something else that makes you suspect trade-secrets theft,  contact an attorney who specializes in trade-secrets law immediately. Time is always of the essence in these situations.

Panera Case Gives an Early Interpretation of the Defend Trade Secrets Act

Panera, LLC v. Nettles and Papa John’s International, Inc., 2016 WL 4124114 (E.D. Mo. Aug. 3, 2016) is one of the first cases under the Defend Trade Secrets Act (DTSA). It both answers and raises questions about how the statute will be interpreted.

Here, Panera sued a former senior IT employee who left to work for Papa John’s, allegedly in violation of a noncompete/nondisclosure agreement. Panera brings claims for breach of contract, violations of the DTSA, and violations of the Missouri Trade Secrets Act. A copy of the order is linked below.

18 U.S.C. 1836(b)(3)(A)(i)(I) provides that any injunction entered under the DTSA cannot “prevent a person from entering into an employment relationship, and that conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information that the person knows[.]”

This raised a question that would need to be answered by the courts: if a plaintiff sues for breaching a restrictive covenant and violating the DTSA, can the court enter an injunction based on the restrictive covenant, or would that injunction violate the provision above?

Since the court here entered an injunction, this case suggests that the provision above does not preclude injunctions in restrictive-covenant cases that also include DTSA claims. (Which strikes me as the obviously correct result.)

Interestingly, the court entered an injunction precluding the defendant from working for Papa John’s based on violations of the DTSA, not only breaches of the restrictive covenant. This at least arguably violates the DTSA prohibition on such injunctions. It will be interesting to see if this issue is addressed on appeal.

The provision above was also intended to preclude arguments based on inevitable disclosure, since the DTSA provides that an injunction setting forth employment conditions could not be based solely on information known by the former employee. But here, the Court explicitly considered, and at least partially relied upon, the inevitable-disclosure doctrine:

Although Missouri has not formally adopted the doctrine of inevitable disclosure–and neither has the Eighth Circuit, with regard to federal trade secrets claims–the Court finds the rationale underpinning such a theory helpful to understanding why Nettles’ performance of his new role would almost certainly require him to draw upon and use trade secrets and the confidential strategic planning to which he was privy at Panera.

Again, this at least arguably violates the DTSA.

Perhaps these apparent contradictions will be addressed if the case progresses, particularly if it reaches the Eighth Circuit. I will also continue to keep my eye out for other cases under the DTSA that address these and other open issues.

Panera v. Papa John’s

Should You Abandon Email to Protect Trade Secrets?

In the wake of the hacking of the Democratic National Committee’s email server, it may be time to explore whether transmitting trade secrets via email—even internally—has become too risky.

Email hacks have become commonplace. It is a virtual certainty that your company has at least been targeted by some sort of hacking attempt. For every high-profile hack, like Sony, Ashley Madison, or the DNC, there are thousands of less-visible companies who also suffered data breaches, often involving emails.

The sad truth is that regardless of protection efforts, no company can keep its emails and centrally stored electronic documents 100% safe. Thus, you need to ask: is it time for my company to ban transmittal of trade-secrets via email?

A wholesale ban on email transmission is not always going to be feasible. But for certain types of trade secrets—particularly ones used only by a small number of employees—this could be workable. For example, I wrote recently about trade-secrets relating to design schematics used in 3D printing. Those types of schematics could potentially be stored offline.

These issues are highly unique to each company. You should speak with an attorney who specializes in trade-secret issues to figure out whether your company could benefit from taking trade-secrets offline.

 

Find a Pokemon, Lose Your Trade Secrets?

Well, that escalated quickly. In what seems like an instant, Pokemon went from a faded memory to an all-encompassing craze unlike anything we’ve seen before from an app. Nintendo, the company behind Pokemon Go, had its market cap increase by $7 billion since it was released last week. I haven’t played the game, but I can’t stop hearing and reading about it. Pretty remarkable.

Pokemon Go’s success has far-reaching implications for how we use technology, and in particular augmented reality. I loved this article about how companies can use Pokemon Go to drive foot traffic for about $1/hour. But for our purposes, Pokemon Go may present some unexpected risks to information security.

This article from inc. discusses two of these risks. First,  Pokemon Go users must login using their Google accounts. But Pokemon Go is then automatically granted full access to the user’s Google account. Thus, Pokemon Go “can see and modify nearly all information in your Google Account.” So, as noted in this blog post, users playing Pokemon Go have granted the app permission to read their emails, send emails, access and delete all Google drive documents, and more. Not good. Particularly if your employees have emailed themselves proprietary information.

The developer of Pokemon Go has since issued a statement that this was a mistake, which will soon be fixed. Regardless, this shows how important it is to keep your employees from sending themselves proprietary information, which should be your company’s policy. In addition, various IT solutions can protect against this practice.

Also, Pokemon Go has only been officially released in several countries. Per the inc. article, people living elsewhere have turned to file-sharing services to download the app:

Because the game is popular, people in other countries are obtaining the Android version through unofficial channels – and hackers have already successfully posted malware-infected versions of the app in some file sharing services. One variant of such a malevolent version of the app was discovered by the security firm Proofpoint and is quite serious: it infects Android devices and allows hackers to access the infected devices via a backdoor.

File-sharing services are notoriously dangerous. You should be blocking access to all such services on all company devices.

Issues like these are well-suited for employee training. Employees need to know that seemingly innocent conduct can expose the company to serious risks.

A Landmark Day for Protecting Trade Secrets

Today, President Obama signed into law the Defend Trade Secrets Act. This means that companies whose trade secrets are misappropriated can now sue in federal court. This will likely usher in a new paradigm in the world of trade-secrets litigation. It will be very interesting to see how plaintiffs react and the statute develops in the next few years. In the meantime, take a look at my previous post for an urgent recommendation for all companies now that the DTSA has become effective.

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