1. Intro to Trade Secrets Intro to IP – Prof Merges 4.6.09

2. How does trade secret (TS) law relate to federal statutory IP? Preemption cases General principles: federalism, interrelationship

3. Kewanee Oil v. Bicron The trade secret at the center of this case was a process that would create 17-inch crystals useful in detecting radiation. A division of the plaintiff firm, Harshaw Chemicals, was involved in the refining of uranium during World War II for the Manhattan Project. This resulted in massive ground pollution that is still a problem today. Both companies involved in the case were later bought out. Harshaw became a part of Engelhard Corporation, while Bicron joined with Saint- Gobain Crystals and Detectors.

6. Kewanee Oil “Employee mobility” case Basic question: is TS law compatible with federal statutory IP scheme?

7. Burger opinion State variation: 18 th century state patents Goldstein v. California: state protection for sound recordings (prior to federal statutory protection in 1972)

8. Potential problem Federal preemption “Dormant commerce clause” analogy – What should the courts infer from Congress’ failure to create federal TS protection?

9. Inference from federal inactivity Congress explicitly decided to leave something unprotected? Congress was indifferent; or believed it appropriate for states to protect the thing in question?

10. Kewanee holding: State trade secret law is not preempted by federal IP scheme – TS law is a “sieve”, as opposed to a “barrier” like patent law Why? Reverse engineering/independent invention; “commercial ethics” as well as innovation policy – A weaker, and quite different, form of IP law

11. Survey evidence: Yale survey (Levin, Klevorick, Nelson, and Winter 1983) Carnegie-Mellon survey (Cohen, Nelson, and Walsh 1994) Berkeley-Kauffman Survey 2009 Firms value trade secret protection more highly than patent, copyright, TM in protecting investment in innovation

12. “(T)rade secret protection is an important part of intellectual property, a form of property that is of growing importance to the competitiveness of American industry…The future of the nation depends in no small part on the efficiency of industry, and the efficiency of industry depends in no small part on the protection of intellectual property.” --Rockwell Graphics (Posner, J.)

13. Bonito Boats

14. Boat molds

15. Bonito Boats Florida anti-molding statute Tennessee defendant Held: State statute pre-empted by federal law

16. “Florida statute endows the original boat hull manufacturer with rights against the world, similar in scope and operation to the rights accorded a federal patentee.” -- p. 953

17. Holding: “[T]he [state] statute … so substantially impedes the public use of the otherwise unprotected design and utilitarian ideas embodied in unpatented boat hulls as to run afoul of [the Sears-Compco doctrine].” -- p. 952

18. Aftermath of Bonito Boats Congress passed the Vessel Hull Design Protection Act as part of the Digital Millennium Copyright Act. The VHDPA provides copyright protections to hull designs, and many boat builders have registered their designs. The law has been incorporated into Chapter 13 of the Copyright Act.

19. Merges, “100 Years of Solicitude,” 88 Cal. L. Rev. 2187 (2000) –History of IP rights, 1900-2000 “Strength” of IP Rights Value of Information

20. State Law Protection Uniform Trade Secrets Act Trade secrets are protected under state law Uniform Trade Secrets Act - Model Act Amended in 1985 41 states have enacted statutes modeled after UTSA 2 states (AL and MA) have separate state statutes protecting trade secrets 7 states protect trade secrets under the common law

21. Defining Trade Secrets Metallurgical Industries v. Fourtek Interesting facts – Plaintiff was a customer of defendant’s predecessor; contributed substantially to design of technology

24. Facts Metallurgical sued when Fourtek signed K with a Metallurgical competitor Common situation: the (informal) joint venture, leading to technology exchange, leading to an IP conflict

25. A Transactional View of Property Rights, 20 Berkeley Tech. L.J. 1477 (2005) Robert P. Merges

27. Metallurgical Industries Were the “incremental” and “public domain” contributions by plaintiff “trade secrets” as defined by Texas law? Unitary heating elements, vacuum filters, chill plates: all combined to form a useful – and secret – set of improvements in furnace design

28. Metallurgical holding “[Trial court] abused discretion in excluding evidence” New trial, with evidence of existence of TS

29. Trade Secret in General In general, a trade secret can be defined as any commercially valuable information or compilation of information that is not generally known to others who can profit from its disclosure or use

30. Information, including a formula, pattern, compilation, program, device, method, technique, or process, that: – derives independent economic value from not being generally known or readily ascertainable by proper means by other persons and; – is the subject of efforts that are reasonable under the circumstances to maintain its secrecy Definition of TS

31. UTSA Provides cause of action for “misappropriation” of trade secrets 3 year statute of limitations - action must be brought within 3 years after misappropriation is discovered or should have been discovered "Misappropriation” defined as: (i) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means or;

32. (ii) disclosure or use of a trade secret of another without express or implied consent by a person who: – Improperly acquired trade secret – At the time of disclosure or use, knew or had reason to know that his knowledge of the trade secret was: Derived from improper means Acquired under a duty to maintain secrecy Acquired by accident or mistake