End of the Year Post: Why I Support the Defend Trade Secrets Act

This year, I am taking a different approach for my end of the year post. Instead of recapping the year's highlights, I would like to give my perspective on the most significant development in the law of trade secrets and non-competes we're likely to see in some time: the likely passage of the Defend Trade Secrets Act of 2015. Here's my take:

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On December 1, 2015, I added my name to a Trade Secrets Practitioners' Letter, which was sent to the U.S. House and Senate sponsors of the Defend Trade Secrets Act of 2015 (a copy of the proposed legislation can be found here).

The legislation, which is likely to pass with robust bi-partisan support, creates a federal civil cause of action for trade secrets misappropriation. If passed, federal law will protect all four branches of intellectual property rights - trade secrets, patents, trademarks, and copyright. It is no secret that trade secrets are an increasingly important component of our knowledge economy, and federal courts already are adept at handling these cases under their diversity jurisdiction call or as part of a case featuring a federal claim.

I was at first reluctant at supporting the DTSA, and I believed that state courts' traditional role at handling trade secrets and non-compete litigation was one that we lawyers should continue to honor. However, proponents of the DTSA have persuaded me to the merits of a federal cause of action. My rationale is different, though, than my counterparts. And although my specific reasons for supporting the bill are not contained in the Practitioners' Letter (my background is far to modest to even suggest offering changes), that's not essential to my endorsement of this potential new law.

So why do I support the DTSA? My reasons are two-fold. First, I believe federal courts have the muscle to parse out spurious claims of misappropriation and hold plaintiffs accountable for bad-faith filings. To this end, I think the existence of a federal cause of action will deter counsel from filing claims with a questionable factual basis, since federal district courts have a strong record of imposing fees for claims filed in bad-faith. State courts simply don't have this interest or capacity. The bench is often very close to the bar in state courts, meaning that judges understandably are reluctant to impose sanctions for frivolous claims. State judges also do not have the support of law clerks to conduct the necessary legal and factual research. They do not have the bandwidth to watch cases closely and are unable to engage in the type of analysis that is required to determine whether defense fee-shifting is appropriate.

Second, the changes to the Federal Rules of Civil Procedure (which went into effect today) are likely to reduce the cost of litigation and bring suits to trial more quickly than in state court. Federal courts, particularly with engaged and knowledgeable magistrates, have much greater capacity to monitor discovery for proportionality. The new rules are designed to achieve this end and should allow smaller litigants to defend cases more efficiently. State courts largely count on the cooperation of counsel to self-police discovery. Teeing up discovery disputes rarely leads to positive outcomes in state court, absent active judicial engagement. And unfortunately, many state courts lack this capacity. Therefore, I believe that the federal rules changes will cause counsel to try cases through the discovery phase more efficiently.

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On November 15, a group of law professors wrote a lengthy letter opposing the DTSA. I do not believe their concerns are sufficient to override the DTSA's benefits at reducing litigation cost and remediating bad-faith claims. These are the concerns:

1. The DTSA's Ex Parte Seizure Provision May Harm Small Businesses, Startups and Other Innovators.

The DTSA contains a controversial provision that allows for the seizure (on an ex parte basis) of the instrumentalities of trade secrets theft. This is not the law's most outstanding feature, to be sure. But it's not an independent reason to defeat the law. For starters, I have a hard time believing that federal courts will warm to the idea of this remedy. It will be deployed sparingly. And the professors give judges short shrift. Judges are competent enough to snuff out abuses and impose damages for an wrongful seizure of property. This remedy potentially is a paper tiger, and it will work itself out in practice.

2. The DTSA Appears to Implicitly Recognize the Inevitable Disclosure Doctrine.

This argument stems from the provision of the DTSA that says a court may impose injunctive relief to prevent actual or threatened misappropriation, "provided the order does not prevent a person from accepting an offer of employment under conditions that avoid actual or threatened misappropriation."

How the professors conclude this endorses the "inevitable disclosure" rule is simply beyond me. No canons of statutory construction allow for this rather extraordinary position. Given the robust debate around the "inevitable disclosure" doctrine, the DTSA easily could have expanded the rights associated with seeking injunctive relief to bring the doctrine within the statutory language. It does not do so. To read some implicit endorsement of the doctrine is simply unreasonable.

3. The DTSA Likely Will Increase the Length and Cost of Trade Secret Litigation.

As discussed above, the opposite will occur - particularly given the change to the Federal Rules of Civil Procedure.

Separately, the Professors rely on a study showing that the cost of IP litigation ranges from $250,000 (for cases worth less than $1 million) to $1.6 million (for cases where over $25 million is at stake). However, this statistical evidence does not necessarily mean that trade secrets cases in federal court are more expensive. For starters, many of those cases are high-stakes patent cases. A lot of trade secrets claims are in the mold of employment (as opposed to IP disputes). Too, the Professors' reliance on this study assumes that the cost is lower in state court. I am not so sure about this, since state courts are more apt to grant continuances - the biggest cause of increased legal fees. With federal courts, you have some assurance that judges will enforce deadlines strictly.

4. The DTSA Will Likely Result in Less Uniformity in Trade Secret Law.

This justification also seems insufficient. The states have developed rules under the Uniform Trade Secrets Act, and with some exceptions, the law is indeed predictable. There are some differences in the Uniform Act concerning attorneys' fees availability and the statute of limitations. To this end, a federal law certainly will help bridge any differences.

It will take time for courts to resolve some areas of the law - like the "inevitable disclosure" doctrine - but it is very likely that courts will look to the laws in their states until such time as the circuit courts step in. That is a fairly long process that must play out, but it won't hurt parties and won't confuse lawyers. The permutations in trade secrets law among the states simply aren't that great that we will need to worry about having to cite to new law and new cases.

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I realize that the arguments on both sides of this debate are well thought-out and well-intentioned. But having absorbed this debate now for a couple of years, I remain convinced that trade secrets lawsuit in federal court will weed-out weak, spurious claims and will result in a quicker disposition of cases by judges who have the staff to handle them.

Second Circuit Adopts Narrow View of Computer Fraud and Abuse Act

As the Second Circuit wades into the long-simmering fray over the Computer Fraud and Abuse Act, I am starting to wonder if this is all worth the trouble. In other words, do we have reason to be concerned about the CFAA reaching seemingly innocuous conduct, or is the statute working as intended?

For those unfamiliar with the dispute over this once-obscure law, the statutory language "exceeds authorized access" has divided federal courts for more than ten years. The CFAA imposes both civil and criminal liability for those who exceed authorized access from a protected computer and obtain certain types of information. The term "exceeds authorized access" means to access a computer with authorization and to use such access to obtain or alter information in the computer that the accesser is not entitled to obtain or alter.

The dispute in employment contexts almost always arises when an employee, before leaving to compete, accesses a company database and digitally copies proprietary files (they do not have to be trade secrets under the CFAA). The employee's access is technically authorized, but if the employee acquires information contrary to his duty of loyalty and then misuses company data, some courts have held that this improper purpose qualifies as "exceeding" authorized access. Other courts take the opposite view.

An interesting (and very disturbing) case from the Second Circuit has fueled this split in authority. The case is not an employment case and involves a disgusting set of facts that I won't repeat. The case of United States v. Valle arose when a New York City police officer accessed a computer program called Omnixx Force Mobile, which allowed him to search restricted databases like the federal National Crime Information Center database, to gain sensitive personal information about an individual. The purpose of his access was to learn details about a woman the officer knew from high school, and whom he and a co-conspirator intended to kidnap. As such, the officer had no valid law enforcement purpose for accessing the database.

Reversing a conviction under the CFAA, the Second Circuit waded into the fray over the meaning of "exceeds authorized access" and the application of that statutory term to the officer's conduct. The court acknowledged a deep circuit split over the term's meaning and then took a deep, even nauseating dive, into the CFAA's legislative history. After going through that exercise, the court ultimately found that both the narrow and broad view found some support. And because of that, the court determined that a criminal statute had to be construed narrowly (the so-called rule of lenity).

The Second Circuit then adopted the "parade of horribles" approach, articulated by Judge Kozinski in United States v. Nosal. In that case, Judge Kozinski described the potential reach of the CFAA if the court had authorized a broad definition of "exceeds authorized access," a reach that would in his view criminalize a wide range of innocuous, everyday behavior. The examples include an employee using a computer to check Facebook, in violation of a corporate computer policy and similar conduct qualitatively different than that before the court.

Given the Second Circuit's adoption of a narrow view (and its agreement with the Fourth and Ninth Circuit), the circuit split over the CFAA's reach has become deeper. It is possible that U.S. Attorney Preet Bharara will seek to file a petition for writ of certiorari over this question. Though Congress in the past has entertained amendments to the CFAA, no legislative activity is imminent. In my view, Congress easily could find a middle ground between the two lines of authority to ensure that the CFAA does cover the type of conduct at issue in Valle and even civil cases that resemble some form of insider hacking or sabotage.

But even though I have in the past endorsed the narrow view of the CFAA, I question whether prosecutors are abusing the law. While the result in Valle seems wrong strictly in terms of justice, the Second Circuit's reversal in no way suggests that prosecutors overreached by charging Valle under the CFAA. Nor am I seeing an overuse of the CFAA in the civil context. Cases like Nosal, to be sure, seem more appropriate for a civil remedy. But are they outliers? Is the CFAA actually being used selectively, rather than punitively? If so, then perhaps we need not worry so much about individuals being hailed into court based on a "confused, accidental, or otherwise inappropriate use" of a database (the coin the phrase used by the dissenting judge in Valle). Maybe we have struck the right balance and done our best with an imperfect law that can, at times, be used effectively.

Fifth Circuit Addresses Meaning of "Fundamental Policy" In Choice-of-Law Dispute

Choice-of-law clauses are one of the most important procedural frontiers in non-compete disputes.

State law concerning enforceability of covenants not to compete often contains unique twists and turns. Witness Illinois' rather unique rule on consideration in the at-will employment context. Increasingly, choice-of-law clauses are becoming prevalent in non-compete litigation. This paradigm arises because of our increasingly mobile economy where employees work for companies domiciled in other states, the effect of mergers and acquisitions, and corporate counsel's more informed awareness to selecting a particular state's law when drafting contracts in the first place.

I have written many times on the tensions posed by choice-of-law clauses, and generally courts need to assess several questions, including the connection that the chosen state's law has to the litigants. Choice-of-law clauses pose even more difficult questions when the state with the greater interest in the lawsuit has a strong public policy concerning non-competes.

A stark illustration of these choice-of-law rules comes from the recent Fifth Circuit case of Cardoni v. Prosperity Bank. The case involved a very common set of facts that can give rise to choice-of-law disputes. Prosperity Bank in Texas bought an Oklahoma-based bank called F&M, and in connection with that acquisition had key F&M employees sign new employment contracts governed by Texas law. Those contracts contained typical non-competition, non-solicitation, and non-disclosure covenants. Four bankers, who all were Oklahoma residents, then left to compete against Prosperity.

The Fifth Circuit's analysis of the choice-of-law clause focused on the degree to which Oklahoma's public policy was "fundamental" and whether it was sufficient to override the Texas choice-of-law clause. The court described the notion of a "fundamental policy" as an "elusive concept" but made clear to note that it is not one that focuses on assessing potential outcomes of the case. Put another way, courts do not look to whether the difference in state law changes the result at trial. The "fundamental policy" question must strike deeper than that. (This is not the standard in a minority of other states.)

As applied to the bankers' contracts in Cardoni, the court found that Oklahoma's public policy against enforcement of employment non-compete agreements was "fundamental" on account of its state statute. It is fairly safe to assume that a state's enactment of a statute directly concerning non-competes expresses the will of the people or, less colloquially, a "fundamental policy" for purposes of a choice-of-law analysis. Oklahoma, for its part, is one of a handful of states (along with California and North Dakota) that generally ban non-competes.

The court's analysis was different for the bankers' non-solicitation clauses, which the same Oklahoma statute generally permits. The law in Oklahoma is nuanced as to those clauses' permissive scope, but even the narrower limits of enforceability do not implicate a fundamental policy (at least in the Fifth Circuit's eyes). Therefore, in Cardoni, the court reached a somewhat unusual result that Texas law (the chosen law in the contracts) governed the non-solicitation covenants but not the broader non-competition covenants.

The result illustrates the importance counsel must pay to choice-of-law questions when cross-border disputes arise. It is crucial to examine the nature of the contacts the parties have to the competing states, the relationship of those contacts to the actual dispute, and the permutations of the law between the respective states.

Is the Majority Test for Determining Bad Faith in Trade Secrets Claims Still Good Law?

Recently, I had the opportunity to speak at the American Intellectual Property Law Association's annual Trade Secrets Summit. My topic (along with co-presenter William L. Schaller) was "Bad Faith in Trade Secrets Litigation." I know the topic well, having represented many defendants in specious trade secrets claims, including the prevailing defendants in Tradesman Int'l v. Black, 724 F.3d 1004 (7th Cir. 2013).

Although the Uniform Trade Secrets Act does not define "bad faith," its commentary in Section 4 does indicate that courts should look to the standards of the Patent Act, 35 U.S.C. Sec. 285, That section enables a court to award attorneys' fees to a prevailing party in an exceptional case. Therefore, the UTSA's commentary seems to equate "bad faith" with "exceptionality." (As a side-note, not all states that have adopted the UTSA contain a bad-faith provision on par with Section 4. At last count, four states lack a discretionary fee-shifting provision.)

The case law concerning a Section 4 claim of bad faith is relatively narrow, with few courts outside California formulating much in the way of a test. California, for its part, has long adopted a two-part "objective/subjective" test, which asks:

1. Whether the trade secrets claim is "objectively specious." This means that the plaintiff must lack proof as to one of the essential elements of the case.

2. Whether the facts support a finding of "subjective misconduct." Here, courts examine evidence of harassment, delay, and improper motive.

Lawyers who have experience with bad-faith claims often assume that this California test is generally applicable. However, a Supreme Court case from 2014 may cause attorneys to reconsider if they're examining claims of bad-faith under the appropriate framework.

Pivoting back to the Patent Act, the Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), clarified the standard of "exceptionality" under Section 285. It stated:

"an 'exceptional' case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is 'exceptional' in the case-by-case exercise of their discretion, considering the totality of the circumstances."

The standard is remarkably flexible, endorsing a large grant of discretion to a trial judge to consider whether fee-shifting is appropriate. Given the fluid "totality of the circumstances" test, virtually nothing is off-limits in establishing bad faith.

At the Trade Secrets Summit, Bill Schaller and I discussed the importance of "trigger facts" to avert a bad faith claim. Those trigger facts may insulate a plaintiff from fee-shifting, even if the case turns out poorly. Among the most common trigger facts are:

1. Some suspicious computer activity, such as mass downloads or improper use of a personal storage device.

2. Physical retention of corporate records, which could reflect company secrets.

3. Dishonest conduct at the time of departure or failure to participate in an exit interview.

4. The failure of counsel to alert the plaintiff as to erroneous facts assumed by the plaintiff in filing the case (here, most claims of misappropriation must proceed based on inference).

It is possible the Octane Fitness framework is no different than the California test, for the bad-faith determination is inherently fact-specific. However, for defendants, it seems quite clear that they have enormous flexibility in arguing a claim for fees based on the case's inherent weakness, even apart from any evidence that reflects evil motive. That is the way it should be.