Shhh! It’s Time for Trade Secret Cases Steve Baron

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

Cenveo Corp. v. Southern Graphic ( )

 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 ( )  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)  DWsAHE/ DWsAHE/ DWsAHE/

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