Shhh! It’s Time for Trade Secret Cases Steve Baron 10-27-09

Cenveo Corp. v. Southern Graphic (1-22-09) What Court? Who’s the plaintiff? Who are the defendants? What are they fightin’ about? What is the Court asked to decide? What does the Court decide and why?

Cenveo Corp. v. Southern Graphic (1-22-09) Court = US DC Minnesota Plaintiff = Cenveo Defendants = Southern Graphic and indiv. Fight = Cenveo wants to stop SG from working with past and current Cenveo clients and using proprietary info. Court to decide whether to enter preliminary injunction.

Cenveo Corp. v. Southern Graphic (1-22-09) Court decides: Grants preliminary injunction in part and denies in part. What are alleged trade secrets: Job history information USB flash drive

Cenveo Corp. v. Southern Graphic (1-22-09) Cenveo claims: Breach of duty of loyalty Tortious interference with employees and customers Misappropriation of trade secrets Unjust enrichment Unfair competition

Cenveo Corp. v. Southern Graphic (1-22-09) Preliminary injunction factors: Irreparable harm Balance of harms Probability of success on the merits Public interest

Cenveo Corp. v. Southern Graphic (1-22-09) Why wasn’t Cenveo entitled to a preliminary injunction to stop SG from working with past and present clients? No irreparable harm Balance of harms in favor of SG employees Right of clients to work with whom they want

Cenveo Corp. v. Southern Graphic (1-22-09) Why was Cenveo entitled to an injunction on information relating to job histories? Sufficient trade secret Competitively advantageous Would be irreparably harmed High degree of probability of “inevitable disclosure”

ClearOne v. Chiang (2007) What court? Who’s the plaintiff? Who are the defendants? What’s the fight about? What’s the procedural posture?

ClearOne v. Chiang (2007) Court = USDC Utah Plaintiff = ClearOne = Maker of wideband code Defendants = Biamp licenses object code from Wideband The fight’s about whether the code is a trade secret The posture: Biamp files a motion to dismiss

ClearOne v. Chiang (2007) Biamp says: it can’t read the object code; only machines can read object code. Court says: who cares. It doesn’t matter. Biam says: object code was publicly available. Court says: who cares. Even if object code available, the source code (human readable) may still be protectable trade secret. Result: Motion to dismiss complaint denied.

Taco Bell v. TBWA (2009) http://www.youtube.com/watch?v=M8sZ1DWsAHE/

Taco Bell v. TBWA (2009) What court? Who’s the plaintiff? Who’s the defendant? What are they fightin’ about? What’s the trade secret?

Taco Bell v. TBWA (2009) Court = Ninth Circuit Court of Appeals Plaintiff/Appellant = Taco Bell Defendant/Appellee = TBWA They’re fightin’ about who should pay for the use of the psycho chihuahua character. The confidential TS is the concept of using a psycho chihuahua as a Taco Bell mascot

Taco Bell v. TBWA (2009) Underlying case: Wrench v. Taco Bell Jury finds that Taco Bell breached and implied confidentiality agreement. Awards Wrench $30 million, which mounts to $42 million with interest.

Taco Bell v. TBWA (2009) This case: Question presented: Is Taco Bell’s ad agency, TBWA, liable for “indemnity” to Taco Bell? Trial court granted summary judgment for TBWA. Ninth Circuit agrees: TBWA not aware of implied contract b/t Taco Bell and Wrench.

Quote of the Day “Do not tell secrets to those whose faith and and silence you have not already tested.” Elizabeth I