Header graphic for print
Trading Secrets A Law Blog on Trade Secrets, Non-Competes, and Computer Fraud

Category Archives: Practice & Procedure

Subscribe to Practice & Procedure RSS Feed

Trade Secret Protection: What are Reasonable Steps?

Posted in Cybersecurity, Data Theft, Practice & Procedure, Trade Secrets

As a special feature of our blog –special guest postings by experts, clients, and other professionals –please enjoy this blog entry by Pamela Passman, President and CEO for the Center for Responsible Enterprise and Trade (CREATe.org)

-Robert Milligan, Editor of Trading Secrets

By Pamela Passman

Regional and national laws are increasingly focusing on the specific steps that companies … Continue Reading

Robert B. Milligan to Speak at 2015 ABA Annual Meeting on Trade Secret and Non-Compete Developments

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

Join Seyfarth Trade Secrets and Non-Compete Co-Chair Robert B. Milligan at the 2015 ABA-IPL Annual Meeting in Chicago on July 30, 2015.  Robert will join expert panelists to discuss significant statutory changes to several jurisdictions’ laws regarding restrictive covenants and pending legislation proposed in additional jurisdictions over the past year, as well as the ongoing effort to federalize trade secret … Continue Reading

No Economic Recovery Available For Breach Of A Non-Compete Set Forth In A Distributorship Agreement Which Bars Damages Awards

Posted in Non-Compete Enforceability, Practice & Procedure

Where a freely negotiated contract between two sophisticated companies included a provision barring an award of monetary relief for breach of contract, the court will enforce the provision as written and award no economic damages.  CH2O, Inc. v. Meras Engineering, Inc., No. 45728-8-II (Wash. App. Court, July 21, 2015) (unpublished opinion).

Status of the Case

A non-exclusive distributorship agreement … Continue Reading

Upcoming Webinar: State Specific Non-Compete Oddities Employers Should Be Aware Of

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

On Tuesday, August 18, 2015 at 12:00 p.m. Central, Kate Perrelli, Eddy Salcedo and Dawn Mertineit will present the sixth installment in our 2015 Trade Secrets Webinar Series. They will discuss the significant statutory changes to several jurisdictions’ laws regarding trade secrets and restrictive covenants and pending legislation proposed in additional jurisdictions over the past year.  As trade secrets and … Continue Reading

Sales Of $8,000 Stemming From Trade Secret Misappropriation Results In Liability For $1.3 Million

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

At a time when an ex-employee’s newly created company was subject to an injunction prohibiting misappropriation of his former employer’s supposed trade secret, the new company allegedly used that confidential information on a few occasions in the course of providing services.  The former employer sued.  Although the trial court found no violation of the injunction, that ruling was reversed on … Continue Reading

Non-Compete Injunction Denied, Ninth Circuit Remands For Reconsideration, But District Court Denies It Again, Declines Equitable Tolling

Posted in Non-Compete Enforceability, Practice & Procedure

As directed by the court of appeals, a district court judge reconsidered his denial of a non-compete covenant case injunction but reached the same result on reconsideration.  He also stated why he would not have extended the covenant’s expiration date even if he had been inclined to enter the injunction.  Ocean Beauty Seafoods LLC v. Pacific Seafood Group Acquisition Co., … Continue Reading

Hawaii Bans Non-Compete and Non-Solicit Agreements with Technology Workers

Posted in Legislation, Non-Compete Enforceability, Practice & Procedure, Trade Secrets

Hawaii joined the small list of states that prohibit certain non-compete agreements with employees.

On June 26, 2015, Hawaii’s governor David Ige signed Act 158 which voids any “noncompete clause or a nonsolicit clause in any employment contract relating to an employee of a technology business.”

The Act defines “technology business” as one that “derives the majority of its gross … Continue Reading

Is An Offer Of At-Will Employment Adequate Consideration For A Non-Compete? Recent Court Rulings Split Three Ways

Posted in Non-Compete Enforceability, Practice & Procedure, Restrictive Covenants

Three very recent decisions reflect the irreconcilable division of judicial authority regarding the adequacy of at-will employment as the sole consideration for an otherwise valid non-compete.  Compare (a) Standard Register Co. v. Keala, No. 14-00291 (D. Haw., June 8, 2015) (adequate under Hawaii law) (“majority rule”), with (b) Hunn v. Dan Wilson Homes, Inc., Nos. 13-11297 and 14-10365 … Continue Reading

Webinar Recap! How and Why California is Different When it Comes to Trade Secrets and Non-Competes

Posted in Practice & Procedure, Trade Secrets

We are pleased to announce the webinar “How and Why California is Different When it Comes to Trade Secrets and Non-Competes ” is now available as a podcast and webinar recording.

In Seyfarth’s fifth installment of its 2015 Trade Secrets Webinar series, Seyfarth attorneys focused on recent legal developments in California trade secret and non-compete law and how it … Continue Reading

How a Trade Secret Could Have Saved a Running Royalty From a Nearly Invincible Law

Posted in Practice & Procedure, Trade Secrets

In Kimble v. Marvel Entertainment, LLC, just handed down June 22, 2015, the Supreme Court reaffirmed the 50 year old holding  of  Brulotte v. Thys Co., 379 U. S. 29 (1964), that patent royalties cannot extend beyond the expiration of the patent. So why is this case being discussed in a blog directed to trade secrets? Because the Court also … Continue Reading

New Jersey Supreme Court Confirms Aspiring Whistleblowers Can’t Help Themselves to Confidential Documents

Posted in Practice & Procedure, Trade Secrets

By Robert T. Szyba and Jade Wallace

In a pivotal decision with broad implications for aspiring New Jersey whistleblowers, yesterday the New Jersey Supreme Court affirmed the Appellate Division’s finding that no qualified privilege exists to protect an employee from criminal prosecution for taking confidential documents from her employer under the guise of gathering evidence for an employment lawsuit.

In … Continue Reading

Non-Compete That Grants An Employer The Right To Seek Injunctive Relief No Guarantee That Injunction Will Issue

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

A trial court declined to enter a preliminary injunction in a non-compete covenant case despite a provision in the covenant giving the employer the “right to seek injunctive relief in addition to any other remedy available to it.” The decision was affirmed on appeal.

Summary of the case. A 20% owner of a pest control service company (referred to by … Continue Reading

Court, Applying Pennsylvania And California Law, Declines To Enjoin Alleged Violation Of Worldwide Non-Compete

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

A non-competition covenant prohibited employees of Adhesives Research (AR), a company based in Pennsylvania, from performing services for a competitor of AR anywhere in the world for two years after termination. Newsom, AR’s western U.S. manager of medical products, worked out of her home in California. When she quit and joined another adhesives manufacturer, AR sued and moved for entry … Continue Reading

Aggressive SEC Enforcement Efforts Regarding Confidentiality Agreements Will Continue

Posted in Practice & Procedure, Restrictive Covenants

By Ada W. Dolph

In a post-script to the SEC’s April 1 cease and desist order penalizing KBR, Inc. for a confidentiality statement that failed to carve out protected federal whistleblower complaints (our alert on it here), SEC Office of the Whistleblower Chief Sean McKessy today made additional comments that suggest public companies as well as private companies that … Continue Reading

Forum Selection Clause in Non-Compete Agreement Unenforceable

Posted in Non-Compete Enforceability, Practice & Procedure

A contractual provision designating the exclusive venue for filing a breach of contract lawsuit was held to be trumped by a 100-year old statute requiring trial of such cases in the county of residence of at least one party. A&D Environmental Services, Inc. v. Miller, Case No. COA14-913 (N.C. App., Apr. 7, 2015).

Summary of the case. A North … Continue Reading

Ninth Circuit Jeopardizes Broad “No Re-Hire” Clauses in California

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

In Golden v. California Emergency Physicians Medical Group, a divided Ninth Circuit panel held that a “no re-hire” provision in a settlement agreement could, under certain circumstances, constitute an unlawful restraint of trade under California law.

The Facts

Dr. Golden, a physician, agreed to settle his discrimination claim against his employer, California Emergency Physicians Medical Group (“CEP”). Their oral settlement … Continue Reading

Webinar Recap! Protecting Confidential Information and Client Relationships in the Financial Services Industry

Posted in Practice & Procedure, Trade Secrets

We are pleased to announce the webinar “Protecting Confidential Information and Client Relationships in the Financial Services Industry” is now available as a podcast and webinar recording.

In Seyfarth’s second installment of its 2015 Trade Secrets Webinar series, Seyfarth attorneys will focus on trade secret and client relationship considerations in the banking and finance industry, with a particular focus … Continue Reading

Many Courts Are Reluctant To Permit Parties To Redact Filed Documents, Or To File Them Under Seal, Even When They Contain Trade Secrets

Posted in Practice & Procedure, Trade Secrets

In a patent infringement case pending in a California federal court, the defendant moved for summary judgment. The parties jointly requested leave to submit to the court under seal, or with redactions, documents containing trade secrets and other confidential information. The court granted the request only in part. Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844 (N.D. … Continue Reading

Beware of the Delaware Choice of Law in Non-Compete Agreements

Posted in Non-Compete Enforceability, Practice & Procedure, Restrictive Covenants

By Justin K. Beyer and Matthew I. Hafter

Delaware has long been one of the jurisdictions most friendly to the interests of corporations and is the state of incorporation for a significant majority of corporations. While that trend does not seem likely to change, a new Delaware Chancery Court decision should give pause to choice of law decisions of Delaware … Continue Reading

Geographically Overbroad Non-Competes Held To Be Unenforceable

Posted in Non-Compete Enforceability, Practice & Procedure

In unrelated decisions, two federal courts recently refused to enforce non-compete covenants in employment agreements that lack reasonable geographic limits.

Status of the cases. In one of the two lawsuits, the employment agreement included a Tennessee choice of law provision. Louisiana courts are more protective of employees than courts in Tennessee. Since the parties had contacts with both states, naturally … Continue Reading

Non-Solicitation Covenant That Is Silent As To Its Scope May Be Unenforceable

Posted in Practice & Procedure, Restrictive Covenants

An employment agreement covenant prohibiting solicitation of co-employees, but not indicating what solicitations were prohibited, has been held to be invalid.

Status of the case.  A multi-count complaint filed in the D.C. District Court charged two former employees of the plaintiff with breaches of contract and tort violations.  The defendants moved to dismiss.   The court held that some of the … Continue Reading

Appellate Court Re-Affirms Key Aspects of Georgia Non-Compete Law

Posted in Practice & Procedure, Restrictive Covenants, Trade Secrets

A recent decision by the Georgia Court of Appeals, Holland Ins. Group, LLC v. Senior Life Ins. Co., 766 S.E.2d 187 (Nov. 20, 2014), includes several excellent reminders regarding the enforceability (and unenforceability) of restrictive covenants in Georgia.

Relevant Facts and Holding

William Holland and Senior Life Insurance Company entered into an agreement (“Agreement”) authorizing Holland to sell Senior Life’s … Continue Reading

Appellate Court Holds That Non-Compete Agreement Assigned Pursuant to Bankruptcy Court Order is Enforceable by Assignee

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

Courts are divided on the enforceability by an assignee of a non-compete covenant relating to personal services where the covenant does not state whether it is assignable and the employee does not consent to the assignment.

Status of the case.  A non-compete agreement signed by an employee of TSG, Inc., purported to be effective for two years after his termination … Continue Reading

Federal Circuit Reverses Lower Court’s Ruling That Plaintiff’s Trade Secret Misappropriation And Conspiracy Claims Were Untimely And Unprovable

Posted in Practice & Procedure, Trade Secrets

The Federal Circuit recently held that the dismissal of a trade secrets complaint for failure to state a justiciable claim was not warranted merely because the misconduct allegedly involved a number of wrongdoers and began many years before the complaint was filed.

Overview of the case. ABB alleged that, during a several decade period, some of its former employees engaged … Continue Reading