In Part I of this post, we reviewed the Court’s ruling on Nosal’s conviction on the CFAA counts. Here in Part II, we turn to the Court’s ruling on the EEA counts, and the exclusion of evidence regarding Nosal’s non-compete provision.
B. Nosal’s Conviction on the EEA Counts:
Nosal was convicted of two counts under the EEA for downloading, copying and duplicating his former employer’s trade secrets without authorization, and for receiving and possessing his former employer’s stolen trade secrets. In relevant part, the EEA provides:
Whoever, with intent to convert a trade secret, that is related to a product or service used in or intended
for use in interstate or foreign commerce, to the economic benefit of anyone other than the owner thereof,
and intending or knowing that the offense will, injure any owner of that trade secret, knowingly –
. . .
(2) without authorization copies, duplicates, sketches, draws, photographs, downloads, uploads, alters,
destroys, photocopies, replicates, transmits, delivers, sends, mails, communicates, or conveys such
(3) receives, buys, or possesses such information, knowing the same to have been stolen or appropriated,
obtained, or converted without authorization;
(4) attempts to commit any offense described in paragraphs (1) through (3);
shall, except as provided in subsection (b), be fined under this title or imprisoned not more
than 10 years, or both.
18 U.S.C. § 1832(a).
Nosal raised four arguments for acquittal or a new trial on the EEA counts: (1) instruction that jury could find Nosal guilty of conspiracy to commit the EEA violations even if there was no trade secret was erroneous; (2) there was insufficient evidence that the source lists were trade secrets; (3) there was insufficient evidence that Nosal and his co-conspirators knew or believed that the source lists were trade secrets; and (4) there was insufficient evidence that Nosal and his co-conspirators knew or believed that taking the source lists would cause his former employer economic harm. The Court rejected each of these arguments.
1. Requirement of Existence of Actual Trade Secret
Nosal argued for acquittal or a new trial on all counts claiming the Court erroneously instructed the jury that it could find him guilty of conspiracy to misappropriate, receive, possess, and transmit trade secrets even if the source lists were not trade secrets as long as he “firmly believed” they were.
The Court rejected this argument based on authority holding that legal impossibility is not a defense to conspiracy charges, including United States v. Hsu, 155 F.3d 189, 193 (3d Cir. 1998). The defendants in Hsu were charged with attempt and conspiracy to steal trade secrets, and sought discovery to prove that the documents they had attempted to obtain were not trade secrets. The Hsu court ruled that the documents were not relevant because legal impossibility is not a defense to either attempt or conspiracy. Id. at 203. The Court further cited the Supreme Court’s recognition that conspiracies are distinct and independent evils punishable by themselves. Salinas v. United States, 522 U.S. 52, 65 (1997).
The Court also found that the legislative history of EEA specifically supported a finding that a “firm belief” satisfied the “knowingly” element. The Court further concluded that any error in the instruction was harmless because the jury found Nosal guilty of the substantive EEA counts, and to do so it had to find that at least one of the source lists was a trade secret. The Court also dismissed several other arguments, including that the conspiracy instruction was a constructive amendment of the indictment because it sought conviction based on the theory that Nosal “firmly believed” the source lists were trade secrets, even if they were not.
2. Evidence the Source Lists Were Trade Secrets
Nosal also argued for acquittal or a new trial on the EEA counts because there was insufficient evidence the source lists were, in fact, trade secrets, and specifically that the information was not drawn from publicly available sources and that the source lists had not been publicly disclosed.
The Court dismissed this argument citing evidence introduced at trial that would support a finding that the source lists were compilations of both public and non-public information, and that the jury could have inferred based on Nosal’s efforts to retrieve the source lists that the information therein was not entirely public.
The Court also held that the jury could reasonably have found that the trade secret status of the source lists was not destroyed by disclosure to third parties based on evidence that such disclosure was relatively rare and that the alleged trade secrets had not been disclosed to third parties, or had been disclosed only subject to a confidentiality agreement.
Finally, based on a review of the balance of evidence, the Court concluded there was sufficient evidence to conclude his former employer had taken “reasonable” steps to protect the source lists as trade secrets.
3. Evidence Conspirators Knew Source Lists Were Trade Secrets
Nosal also demanded acquittal or a new trial because there was not sufficient evidence that he and his co-conspirators knew the source lists were trade secrets. The Court disagreed, holding there was sufficient evidence showing both that the co-conspirators were aware that the specific source lists were, in fact, trade secrets, and that the co-conspirators attempted to keep their activities secret, from which the jury could have inferred they knew the information was trade secret.
4. Evidence Conspirators Knew Taking Source Lists Would Cause Harm
Nosal also argued for acquittal or a new trial because there was insufficient evidence that the co-conspirators intended or knew that their actions would injure his former employer, as is required by the EEA. In reviewing the evidence, the Court concluded there was sufficient evidence from which the jury could conclude that the co-conspirators knew their actions would injure his former employer, including that they were starting a business to compete with his former employer.
C. Exclusion of Evidence Regarding Non-Compete
Finally, Nosal demanded a new trial on all counts claiming he was prejudiced by not being allowed to argue that a non-compete provision in his independent contractor agreement with his former employer was illegal.
The Court stated that, in ruling on motions in limine, it precluded either party from presenting evidence or argument as to whether the provision was actually legal and enforceable. In rejecting Nosal’s demands, the Court held that there was no convincing argument that this ruling was in error, or that Nosal was so unfairly prejudiced by evidence and argument presented at trial relating to the non-compete as to require a new trial.
In the final part of this post, we will look at what may be next for Nosal, and also look at some lessons employers can learn from this case.