Defend Trade Secrets Act Handbook, Third Edition
The Defend Trade Secrets Act of 2016 (DTSA) was one of the biggest legal changes in intellectual property law since the passage of the Lanham Act in 1948. It created a new federal cause of action for trade secret misappropriation. Now for the first time, litigants can bring a cause of action in federal court without asserting diversity or concurrent jurisdiction. Defend Trade Secrets Act Handbook, Third Edition, covers every aspect of the law, and most importantly not only intricately analyzes the DTSA, but puts it within the context of the existing law. It provides all the necessary analysis, primary source material, and forms to jumpstart your knowledge of this new statute and its implications.
The important revisions to the Third Edition include the following:
- Expanded discussion of attempts and conspiracies as they relate to EEA investigations. Of note is discussion of cases from the Ninth Circuit and the Northern District of Illinois.
- A new subsection discussing duplicitous charges by the government.
- An important trend that is apparent from the EEA cases brought to date is the high percentage that involves a “Chinese connection,” in that the person stealing the trade secret was of Chinese descent or did so in connection with a company from the People’s Republic of China (“PRC”) or planned to take the technology information to the PRC. This trend is examined.
- The Federal Circuit reiterated longstanding precedent that only a “special and small category” of cases involving state law claims, such as those requiring resolution of a substantial patent question, give rise to federal subject matter jurisdiction. Cases in which a party uses patent infringement as evidence of trade secret misappropriation, such as the present one, do not constitute such a category. The 2020 case, Intellisoft, Ltd. v. Acer America Corp., is examined.
- A new subsection discussing the unclean hands doctrine. In Scherer Design Group, LLC v. Ahead Engineering LLC, the Third Circuit affirmed that a district court retains jurisdiction to grant equitable relief even if the elements of the unclean hands doctrine are met.
- A new subsection exploring the Communications Decency Act which provides that “no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider,” and that “no liability may be imposed under any State or local law that is inconsistent with this section.”
- Important updates to the strategic defense of a trade secrets case chart including topics such as standing and the seizure process.
- The more recent cases addressing trade secret status for compilations often relate to electronically stored databases. Such databases drive a significant share of modern business operations, and while their constituent parts are frequently available and gathered from public sources, these vast compendia are usually expensive to build and maintain, and they often provide great value to their creators.
Note: Online subscriptions are for three-month periods.
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Chapter 1. Overview of U.S. Trade Secrets Law - R. Mark Halligan
- 1.01 Historical Development of Trade Secrets
- 1.02 Restatement of the Law of Torts: Section 757 (1939)
- 1.03 The Uniform Trade Secrets Act (1979)
- 1.04 U.S. Supreme Court Decisions
- [A] Kewanee Oil Co. v. Bicron Corp. (1974)
- [B] Aronson v. Quick Point Pencil (1979)
- [C] Ruckelshaus v. Monsanto (1984)
- [D] Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989)
- 1.05 Restatement (Third) of Unfair Competition (1995)
- 1.06 The Economic Espionage Act of 1996
- [A] Section 1831: Economic Espionage
- [B] Section 1832: Theft of Trade Secrets
- [C] Section 1839: Four Definitions in the EEA
- [D] The Definition of a Trade Secret in the EEA is derived from the UTSA
- [E] No Federal Civil Cause of Action in EEA
- [F] Section 1833: Exceptions to Prohibitions
- [G] Section 1834: Criminal Forfeiture
- [H] Section 1835: Orders to Preserve Confidentiality
- [I] Section 1836: Civil Proceedings to Enjoin Violations
- [J] Section 1837: Applicability to Conduct Outside the United States
- [K] Section 1838: No Preemption
- 1.07 The Theft of Trade Secrets Clarification Act
- [A] United States v. Aleynikov
- [B] Amendment of Interstate Commerce Requirement
- 1.08 The Foreign and Economic Espionage Penalty Enhancement Act of 2012
- 1.09 The Defend Trade Secrets Act
- [A] The Genesis of the New Federal Trade Secrets Statute
- [B] 114th Congress: Two Proposed Amendments to the EEA
- [C] Senate Judiciary Committee: Defend Trade Secrets Act of 2016
- [D] The Senate/House Judiciary Committees: 2016
- [E] The DTSA Becomes Law on May 11, 2016
Chapter 2. Economic Espionage Act of 1996 - Mark L. Krotoski, Peter J. Toren
- 2.01 Economic Espionage Act of 1996
- [A] Introduction
- [B] History
- 2.02 Analysis of the EEA
- [A] Elements Overview
- [B] Elements Common to 18 U.S.C. §§ 1831 and 1832
- [C] Additional § 1831 Element – Intent to Benefit a Foreign Government
- [D] Additional § 1832 Elements
- [E] Defenses
- [F] Other Provisions
- 2.03 Protecting Trade Secrets During Litigation
- [A] Pre-DTSA
- [B] DTSA Amendment to Section 1835
- 2.04 Criminal Penalties
- [A] Maximum Statutory Penalties
- [B] U.S. Sentencing Guidelines
- [C] Forfeiture
- [D] Restitution
- 2.05 Government Prosecutions Under the EEA
Chapter 3. Uniform Trade Secrets Act - R. Mark Halligan
- 3.01 Introduction
- 3.02 UTSA
- [A] Section 1. Definitions.
- [B] “Trade Secret” and “Misappropriation”
- [C] Section 2. Injunctive Relief.
- [D] Section 3. Damages.
- [E] Section 4. Attorney’s Fees.
- [F] Section 5. Preservation of Secrecy.
- [G] Section 6. Statute of Limitations.
- [H] Section 7. Effect on Other State Law.
- [I] Section 8. Uniformity of Application and Construction
Chapter 4 Analysis of The Defend Trade Secrets Act (“DTSA”) - Peter J. Toren, R. Mark Halligan
- 4.01 Introduction
- 4.02 Need for Legislative Reform
- 4.03 Section-by-Section Analysis
- [A] Federal Jurisdiction for Theft of Trade Secrets
- [B] Definition of a Trade Secret
- [C] Ownership
- [D] Elements
- [E] Presenting Lay and/or Expert Testimony
- [F] Identifying the Trade Secret
- [G] Defenses
- [H] Whistleblower Immunity
- [I] Rights of Trade Secret Owners
- [J] Preemption
- [K] Misappropriation
- [L] Remedies
- [M] Extra-Territorial Application
Chapter 5. New Ex Parte Seizure Order - Mark L. Krotoski
- 5.01 Overview
- 5.02 Comparable Statutory Civil Seizure Orders for Other Intellectual Property Rights
- 5.03 Other Avenues for Obtaining or Enjoining Trade Secrets
- 5.04 Overview of Process to Obtain an Ex Parte Civil Seizure Order
- [A] First Phase: Ex Parte Application
- [B] Second Phase: Civil Seizure Order Elements
- [C] Third Phase: Execution of the Civil Seizure Order
- [D] Fourth Phase: Safeguarding the Seized Trade Secret Materials
- [E] Fifth Phase: Post-Seizure Hearing
- [F] Sixth Phase: Proceedings for an Unwarranted or Excessive Seizure Order
- 5.05 Report on Best Practices on the Seizure and Securing of Seized Information and Media
- [A] Two Areas of Focus
- [B] Federal Judicial Center
Chapter 6. Remedies - R. Mark Halligan
- 6.01 Introduction
- 6.02 Injunctions
- [A] Threatened Misappropriation
- [B] Actual Misappropriation
- [C] Improper Means
- [D] Affirmative Actions to Protect Trade Secret
- [E] In Exceptional Circumstances: Reasonable Royalty
- 6.03 Damages
- [A] Actual Loss and Unjust Enrichment
- [B] Reasonable Royalty
- 6.04 Exemplary Damages
- 6.05 Attorney’s Fees
Chapter 7. Immunity for Whistleblowers and Litigants - Linda K. Stevens
- 7.01 A Balancing Act: Trade Secret Protection vs. The Need to Protect Whistleblowers
- 7.02 The DTSA’s Immunity Provisions
- [A] What Activities Receive “Immunity”
- [B] What Activities Do Not Receive “Immunity”
- [C] The Limits of “Immunity”
- 7.03 Trade Secrets May be Used and Disclosed in Anti-Retaliation Lawsuits
- 7.04 Impact on Employers
- [A] The Need to Update All Non-Disclosure Agreements
- [B] The Risk Posed by Filings Under Seal
Chapter 8. Defenses to Civil Claims under the EEA - Linda K. Stevens
- 8.01 Strategic Defense of a Trade Secrets Case
- 8.02 Legal Defenses to Trade Secret Misappropriation
- [A] Proper Acquisition
- [B] “Readily Ascertainable”
- [C] Lack of “Reasonable Measures”
- [D] A General Listing of Possible Affirmative Defenses
Chapter 9. Other Litigation Issues - Linda K. Stevens
- 9.01 Where to Sue: State v. Federal Court?
- 9.02 Which Federal Forum?
- 9.03 Who Can Bring Suit & Who Can Be Sued?
- [A] Possible Plaintiffs
- [B] Possible Defendants
- 9.04 Whom to Represent?
- 9.05 When to Sue?
- 9.06 Other Possible Causes of Action
- [A] Other Possible Federal Claims
- [B] Possible State Law Claims
- [C] Strategic Considerations Regarding Inclusion of Other Claims
- 9.07 Identification of the Alleged Trade Secret
- 9.08 Protection of the Alleged Trade Secret During the Litigation Process
- [A] DTSA Provisions Protecting Alleged Secrets
- [B] Protective Orders
- 9.09 Protection from Publicity
- 9.10 What State’s Law Applies?
- 9.11 Will Irreparable Harm Be Presumed?
Sample Practice Forms and Finding Aids
- Appendix A - Pre-filing Investigation Checklists
- A-1 Potential Trade Secrets
- A-2 Trade Secret Security Measures
- A-3 FBI Warning Signs and Best Practices
- Appendix B - Sample Nondisclosure Agreement
- Appendix C - Draft Motion for Temporary Restraining Order/Preliminary Injunction
- Appendix D - Ex Parte Seizure Checklist
- Appendix E - Emergency Application for Ex Parte Seizure Order Pursuant to Section 18.U.S.C. Section 1836(b)(2) and Memorandum in Support
- Appendix F - Court Order Granting an Ex Parte Seizure Application
- Appendix G - Model Protective Order
- Appendix H - Sample Jury Instructions
- Appendix I - Table of Section 1832 Cases (1996-2015)
Statutes and Congressional Reports
- Appendix J - Uniform Trade Secrets Act with 1985 Amendments
- Appendix K - Economic Espionage Act of 1996
- Appendix L - Defend Trade Secrets Act of 2016
- Appendix M - Defend Trade Secrets Act of 2016 House Report 114-529 (with Amendments to the EEA of 1996)
- Appendix N - Defend Trade Secrets Act of 2016 Senate Report 114-220
- Appendix O - Economic Espionage Act of 1996 House Report 104-788
- Appendix P - The Industrial Espionage Act of 1996 Senate Report 104-359