Intellectual Property and Tech Law Reports

Al Minor & Assoc v. Martin

Trade secrets – R.C. 1333.61(D) – Confidential client lists – List does not lose its character as trade secret merely because former employee utilized memory of list rather than writing or other tangible source.

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Dorel Juvenile Group, Inc. v. DiMartinis

We are not persuaded by any of Dorel’s responses to this straightforward conclusion. Dorel argues that its trade secrets are entitled to protection so long as they retain secrecy and competitive value, and that there is no evidence that the trade secrets are now public. But Dorel itself limited the term of its injunction to that six month period, representing to the court that it expected the information to be released to the public when the relevant products went on the market in April 2007. There is no evidence in this record to the contrary and we cannot engage in additional fact-finding at this stage of the proceedings. If, contrary to Dorel’s expectations and representations, the information was not released to the public by April 20, 2007, that is an issue to raise in the ongoing action in the district court, not in the court of appeals.

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Incase Inc. v. Timex Corp.

Incase, Inc. ("Incase"), won jury verdicts against Timex Corporation ("Timex") in the United States District Court for the District of Massachusetts on its claims of misappropriation of trade secret, breach of contract, and implied contract. The district court subsequently granted judgment as a matter of law to Timex on the trade secret and implied contract claims. In a subsequent bench trial, the district court also found that Timex had committed unfair and deceptive trade practices, but denied Incase punitive damages. Incase now appeals the judgment as a matter of law and the denial of punitive damages. Timex cross-appeals on the denial of its motions for judgment as a matter of law on the remaining claim, and the holding that it committed unfair and deceptive trade practices. Timex also appeals the denial of its motion for a new trial. We affirm the decisions in all respects.

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Triple Tee Golf, Inc. v. Nike, Inc.

Plaintiff-Appellant, Triple Tee Golf, Inc. (“TTG”) sued Defendants-Appellees (“Defendants”), Nike, Inc. (“Nike”) and Tom Stites & Associates, Inc. d/b/a Impact Golf Technologies (“IGT”) for misappropriation of trade secrets, negligent misrepresentation, breach of confidentiality, breach of implied contract, and deceptive trade practices. During discovery, the district court limited TTG’s proofs on all of its claims to evidence related to the use of TTG’s trade secrets in two specific Nike golf clubs, the CPR Woods and the Slingshot irons (collectively, the “accused clubs”). After discovery was completed, Defendants moved forsummary judgment, contending that (1) TTG’s trade secrets describe a system for weighting golf clubs that is adjustable by the user of the clubs, and (2) the accused Nike clubs are not “adjustable” at all. The district court, having determined that all of TTG’s claims turned on the unlawful use of trade secrets, granted Defendants’ motion and dismissed TTG’s suit in its entirety. After the judgment was entered, TTG became aware of two patent applications previously filed by Nike, describing golf clubs that are adjustable by the user of the clubs. Based on Defendants’ failure to disclose these patent applications in response to TTG’s discovery requests, TTG moved for relief from the earlier judgment.

The district court denied this motion, stating that the patent applications were not relevant to the legal issues that it had decided. TTG now appeals the district court’s limiting evidentiary order, grant of summary judgment, and denial of post-judgment relief.

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Synergetics, Inc. v. Hurst

Synergetics, Inc., a company that designs, manufactures, and sells ophthalmic equipment used in eye surgeries, sued former employees Appellants Charles Richard Hurst, Jr. and Michael McGowan for (1) trade secret misappropriation, (2) breach of contract, (3) intentional interference with business relationships, and (4) breach of fiduciary duty. A jury found for Synergetics and awarded compensatory and punitivedamages. The district court1 entered judgment consistent with the jury’s findings, enjoined Hurst and McGowan from using or disclosing Synergetics’ trade secrets for two years, required Hurst and McGowan to destroy the misappropriated information and products developed from that information, and denied the motion for remittitur and proposed judgment. On appeal, Hurst and McGowan argue that the district court should have granted their (1) motion in limine to exclude the testimony and reports of a Synergetics’ expert witness, (2) motion for summary judgment or motion for judgment as a matter of law, and (3) proposed judgment and motion for remittitur. We affirm.

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Mike's Train House v. Lionel, L.L.C.

Defendant-Appellant Lionel, L.L.C., appeals a jury verdict finding it liable for misappropriation of trade secrets and unjust enrichment, and awarding Plaintiff-Appellee Mike’s Train House, Inc. (“MTH”) damages exceeding $40 million. After unsuccessfully moving the district court for a new trial and judgment as a matter of law, Lionel appeals the jury verdict, the district court’s evidentiary decisions, the specificity with which MTH identified its “trade secrets,” the imposition of joint and several liability, and the amount of the damage award. Lionel also appeals the district court’s order granting MTH’s request for an injunction. Because Lionel correctly argues that the district court erred in admitting expert testimony and in imposing joint-and-several liability, and because the jury award improperly “double counts” MTH’s damages, we REVERSE the district court’s order denying Lionel’s motion for a new trial and REMAND this case for further proceedings consistent with this opinion. Because the district court’s injunction is based entirely on the jury’s verdict, we REVERSE that order as well.

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Burbank Grease Servs. LLC v. Sokolowski, 2006 WI 103 (filed 13 July 2006)

Digest Summary by Profs. Daniel D. Blinka & Thomas J. Hammer in September 2006 Wisconsin Lawyer.

Sokolowski was employed by Burbank Grease Services in various management positions. When he left the company, he took certain information (for example, customer lists and other information about Burbank's customers) without Burbank's permission and with the knowledge that Burbank considered this information to be confidential. The defendant later began working for a different company and then allegedly provided the confidential information to his new employer and used the information to solicit customers for the employer.

When Burbank became aware that the defendant was soliciting its customers, it filed this action alleging that the defendant misappropriated Burbank's trade secrets in violation of Wis. Stat. section 134.90; breached his duty of loyalty to Burbank, which he owed as Burbank's agent; intentionally interfered with Burbank's business relationships; and committed computer crimes in violation of Wis. Stat. section 943.70(2). Burbank also filed claims against the defendant's new employer.

Both sides filed motions for summary judgment. The circuit court granted the defendants' motion and dismissed the complaint. The circuit court concluded that Burbank's confidential information was not protected by Wis. Stat. section 134.90(6), the trade secret statute, because the information did not meet the statutory definition of a trade secret. The circuit court also held that the enactment of section 134.90(6) precluded all common law tort claims based on the misappropriation of confidential information, except those that involved information that met the statutory definition of a trade secret. The circuit court further concluded that there had been no computer crime under Wis. Stat. section 943.70(2) because the defendant was authorized to obtain the computer-stored information at the time he obtained it. The court of appeals affirmed the circuit court. See 2005 WI App 28. In a majority decision authored by Justice Roggensack, the supreme court affirmed in part and reversed in part.

In previous decisions in this case that were not appealed, lower courts concluded that the confidential information described above did not qualify as a trade secret under Wis. Stat. section 134.90(1)(c). The supreme court accordingly did not address that question. Rather, it was asked to decide whether section 134.90(6) precludes Burbank's other claims for relief. The court concluded that "the plain language of Wis. Stat. § 134.90(6)(a) appears to have the effect of making § 134.90 the exclusive remedy for civil claims based on the misappropriation of a statutorily-defined trade secret" (¶ 20). However, the language in section 134.90(6)(b)2. leaves available all other types of civil actions that do not depend on information that meets the statutory definition of a "trade secret." Therefore, any civil tort claim not grounded in a trade secret, as defined in the statute, remains available to Burbank (see ¶ 33).

The court also addressed the applicability of Wis. Stat. section 943.70(2)(a)6., which prohibits the willful, knowing, and unauthorized disclosure of "restricted access codes or other restricted access information to unauthorized persons." The court concluded that this statute "was meant to prohibit disclosing information that would permit unauthorized persons to access restricted or confidential information. There has been no allegation that [the defendant] provided information to others that would permit them to access Burbank's computer system" (¶ 37). "In sum, we agree with the court of appeals' construction of Wis. Stat. § 943.70(2)(a)6, that it prohibits the unauthorized disclosure of codes, passwords or other information that grants access to restricted-access systems. We also agree with the court of appeals' conclusion that the statute was not meant to criminalize the disclosure of all types of information that could be stored on a computer, when that information was obtained with authorization in the first instance" (¶ 39) (citation omitted).

Justice Bradley filed a dissenting opinion that was joined by Chief Justice Abrahamson.

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BondPro Corp. v. Siemens Power Generation, Inc.

In its reply brief BondPro acknowledges that “many of the elements of the BondPro slot cell manufacturing process were in the public domain” but states that “the precise execution of each element, in conjunction with the precise execution of each additional element, renders BondPro’s process a secret.” But BondPro has not told us what those details of execution or implementation are. For example, in the list of nine components the temperature and the duration of the application of heat are stated as a broad range rather than as specific numbers—and anyway Wang obtained the range from Siemens! And a broad range was all that Siemens’s patent application disclosed—so if BondPro’s trade secret resides in specifics that have not been disclosed to us, Siemens is not responsible for their disclosure.

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Hicklin Eng LC v. Bartell, R.J.

. . .
On remand the parties and trier of fact will need to separate Axi-Line’s contributions (which Hicklin owns) from Bartell’s (which he owns), determine which of Axi-Line’s data are trade secrets, ascertain whether Bartell recognized that these data are confidential, pin down the use that Bartell made of those trade secrets, and if necessary decide whether Wisconsin law permits such a use. If Hicklin prevails on these issues, the district court will have to select an appropriate remedy.

Hicklin has presented additional legal theories, but the district court need not consider them. These common-law approaches have been superseded by the Trade Secrets Act. See §7(a) of the Uniform Trade Secrets Act, enacted as Wis. Stat. §134.90(6); ConFold, slip op. 12-14 (Wisconsin law);
Hecny Transportation, Inc. v. Chu, 430 F.3d 402 (7th Cir. 2005) (discussing the Illinois version of this provision). They would in any event add little or nothing to the statutory remedy, so they should be put to one side if only to streamline the litigation.

. . .

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Hacny Transp. v. Chu

Illinois Trade Secret Case

The judgment is affirmed to the extent that it dismisses
the counterclaim against Hecny Hong Kong and all of
Hecny U.S.’s claims based on misappropriation of trade
secrets. The decision not to issue an injunction enforcing
the covenant not to compete also is affirmed. The judgment
otherwise is vacated, and the case is remanded for decision
on the merits. Circuit Rule 36 will apply on remand.

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