1. Drafting Key Commercial and Consumer Contract Terms
A Litigation Perspective
Todd C. Jacobs
October 6, 2017

2. Forum in which disputes will be resolved?
Arbitration clauses
Forum selection clauses
Choice-of-law provisions

3. Should you have an arbitration clause?
Consumer facing contracts
Commercial contracts
International contracts

4. Consumer Facing Contracts
Concepcion/Italian Colors – Significantly reduces class action exposure.
Do Consumers Care:
Polling
Equifax Impact
NY Times
CFPB
Common Pitfalls:
No affirmative assent
Not conspicuous
Record keeping
Arbitration rules not sufficiently consumer friendly

5. Commercial Contracts – Arbitration Clauses
Considerations:
Speed, efficiency, confidentiality
Appealability
Quality of decision-maker

6. International Contracts – Arbitration Clauses
Where are you doing business?

7. Forum Selection Clauses
Opportunity to pick your hometown – favorable jury pool
Uniform body of law
Enforceable
IP fights/Arbitration

8. Choice-of-Law Provisions
Uniform body of law
Do your research
New York is a good default

9. Other Common Useful Provisions
Integration clauses
Reliance clauses
Limitations on damages
Limitations on warranties
Time limitations
Fee-shifting provisions
Mediation provisions

10. Todd C. Jacobs Bradley Riley Jacobs PC 847-370-1837 320 W
Todd C. Jacobs Bradley Riley Jacobs PC W. Ohio Street, 3W Chicago, IL Bradley & Riley PC 2007 First Ave. SE Cedar Rapids, IA Tower Place One South Gilbert Street Iowa City, IA 52240

11. Protecting Trade Secrets
Strategies for In-House Counsel
David M. Caves
October 6, 2017

12. Agenda for this Presentation
Trade Secrets – Overview
Defend Trade Secrets Act of 2016
Effective Trade Secret Protection Program

13. What is a Trade Secret?
Information that has commercial value and that has been kept confidential.
For information that qualifies, the owner has additional legal remedies to pursue against theft of the trade secret.

14. What is a Trade Secret?
A trade secret is a formula, pattern, physical device, idea, process, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.

15. Examples of Trade Secrets
Sales data.
Customer lists.
Business methods.
Drawings or blueprints.
Computer programs.
Marketing plans.
Production methods.

16. Advantages of Trade Secret Protection
Unlimited duration.
Worldwide protection (in theory).
No application or registration process.
Effective as soon as the information meets the definition of trade secret.

17. Essential Legal Requirements
The information must be secret.
The information must have commercial value because of its secrecy.
The owner must take reasonable steps to keep it secret.

18. Secrecy
“Not generally known to persons within the circles that normally deal with this kind of information.”
Matters “generally known” –
Matters of common knowledge
Public information

19. Secrecy Limited to a defined group of people.
Can be shared – if secrecy is maintained.

20. Commercial Value
The trade secret must confer an economic benefit to the owner.
The economic benefit must derive from the information’s secrecy – from not being generally known.
There must be a benefit beyond the value of the information itself.

21. How to Demonstrate Commercial Value?
Economic benefits derived from use (e.g., business advantage from the information).
Cost of developing the information.
Licensing revenues or offers.

22. Reasonable Steps to Maintain Secrecy
Evaluated on a case by case basis.
Examples:
Restrict physical access (lock it in a vault).
Limit the number of people who have access.
Password protection / encryption.
Non-Disclosure agreements.

23. What Is Lawful?
Reverse engineering.
Independent creation.

24. How Are Trade Secrets Protected?
Contracts:
Confidentiality Agreements.
Non-Disclosure Agreements.
Other legal remedies:
DTSA / UTSA.
Tort law or unfair competition law.

25. Defend Trade Secrets Act of 2016
New federal law – effective May 11, 2016.
Similar to existing state law (Uniform Trade Secrets Act).
Two primary functions of the DTSA:
Opens federal court to all trade secret owners.
Aims for national uniformity.

26. DTSA vs. UTSA Similar definition of “trade secret.”
Similar definition of “misappropriation.”
Similar remedies – injunctive relief, compensatory damages, exemplary damages, potential recovery of attorney fees.

27. DTSA vs. UTSA DTSA provides access to federal court.
DTSA provides for an ex parte seizure order available in “extraordinary circumstances.”
DTSA does not allow an owner to claim “inevitable disclosure.”

28. Trade Secret Protection
Identify trade secrets.
Develop and clear and concrete protection program.
Restrict Access.
Policies for Employees.
Policies for Third-Parties.

29. Identify Trade Secrets
Accurate identification may be essential for enforcement.

30. Effective Protection Program
Appoint a point person.
Develop policies and procedures for employees and third-parties.
Communicate policies and procedures through training.
Monitor compliance.

31. Restrict Access Determine who needs access. Restrict physical access.
Restrict electronic access.
Password protection
Encryption

32. Policies for Employees
Confidentiality agreements.
Handbook policies.
Restrict electronic access to select employees.
Training and communication.

33. Policies for Third Parties
Non-Disclosure agreements (NDAs).
Encryption.
Other restricted access – password protection.
Terms and conditions of restricted access.

34. Questions?

35. David M. Caves Bradley Riley Jacobs PC 319-861-8728 320 W
David M. Caves Bradley Riley Jacobs PC W. Ohio Street, 3W Chicago, IL Bradley & Riley PC 2007 First Ave. SE Cedar Rapids, IA Tower Place One South Gilbert Street Iowa City, IA 52240