tection . 9 The DTSA is a significant step that will allow the U . S . to urge other countries to provide meaningful protection for trade secrets .
A key feature of the DTSA that helped its acceptance is that it expressly does not preempt state law . The UTSA will continue to be available for parties to use just as they do today . In many instances , this will give litigants a further choice whether to seek relief in state court or in federal court . There may be compelling reasons to choose either statute , or either forum . For example , the DTSA has injunction provisions that are somewhat more limited than the UTSA . Related claims / causes of action may militate toward a state or a federal forum . As a result , the continuing “ experiment ” we have had , with a number of similar but not identical state trade secrecy provisions , will not be brought to a close with the new legislation . To some extent , the DTSA merely adds another variant to the mix .
It has not taken long for the DTSA to be put to use . The ink was barely dry on the DTSA when a company called Magic Leap brought suit against two of its employees under both the DTSA and California ’ s version of the UTSA . 10 On June 13 , 2016 , Space Data Corporation sued Google and its related companies X and Alphabet for misappropriation under both the DTSA and California ’ s UTSA as well . 11 While it is too early to tell how the DTSA will perform as a reasonable balance between the rights of trade secret holders and the rights of others , it looks like we may not need to wait too long to find out . ____________________ Stuart Meyer , Esq . is a Partner in the Intellectual Property Group at Fenwick & West , LLP with office locations in Williston , Vermont and Mountain View , California . His practice focuses on intellectual property matters , particularly for high technology companies and with respect to technologybased litigation . He lives in Williston . ____________________
1
18 U . S . C . § 1836
2 https :// www . whitehouse . gov / the-press-office / 2016 / 05 / 11 / remarks-president-signing-s- 1890-defend-trade-secrets-act-2016
3 http :// www . uniformlaws . org / shared / docs / trade % 20secrets / utsa _ final _ 85 . pdf
4
Vermont Trade Secrets Act , 9 V . S . A . §§ 4601- 4609 . Notably , it took several years before the Vermont Supreme Court had occasion to decide a case based on Vermont ’ s version of the UTSA . Dicks v . Jensen , 172 Vt . 43 , 768 A . 2d 1279 ( 2001 ).
5
134 S . Ct . 2347 ( 2014 )
6
18 U . S . C . § 1831 ( 1996 , as amended 2013 )
7
See , e . g ., Office of the U . S . Trade Representative , 2015 Special 301 Report at 20 , available at https :// ustr . gov / issue-areas / intellectual-property / special-301 / 2015-special-301-review ; Administration Strategy on Mitigating the Theft of U . S . Trade Secrets ( IPEC , February 2013 ), available at https :// www . whitehouse . gov / sites / default / files / omb / IPEC / admin _ strategy _ on _ mitigating _ the _ theft _ of _ u . s ._ trade _ secrets . pdf .
8
Consummated with the Berne Convention Implementation Act of 1988 ( now codified at 17 U . S . C . § 116A ), the most recent push for accession came in the early 1980 ’ s as concerns rose about the ability of U . S . copyrights to be sufficiently protected overseas . See , Senator Orrin Hatch ’ s extensive treatment of this history in “ Better Late Than Never : Implementation of the 1886 Berne Convention ,” 22 Cornell Int ’ l L . J . 171 ( 1989 ), available at : http :// scholarship . law . cornell . edu / cgi / viewcontent . cgi ? article = 1212 & context = cilj . One prerequisite to acceding to the Berne Convention was establishing that the U . S . protect not merely the economic rights under copyright law , but the moral rights as well . Moral rights include the so-called rights of “ integrity ” and “ paternity .” The right of integrity allows an artist , for instance , to object to “ mutilation ” of a work — in the modern world , a “ mash-up ” might be an example . The right of paternity guarantees that a work will always be attributable to its creator . It was resistance to moral rights that for a century prevented the U . S . from being able to accede to this treaty . In the 1980 ’ s , the U . S . argued that a patchwork of its state and federal laws , in areas ranging from defamation to privacy , already provided equivalent protection . See , Natalie C . Suhl , “ Moral Rights Protection in the United States Under the Berne Convention : A Fictional Work ?”, 12 Fordham Intellectual Property , Media and Entertainment L . J .: 1203 ( 2002 ), available at : http :// ir . lawnet . fordham . edu / cgi / viewcontent . cgi ? article = 1239 & context = iplj . And , just to be sure , a minor amendment was made to the U . S . Copyright Act in 1990 to grant rights of attribution and integrity , albeit limited to the visual arts . 17 U . S . C . § 106 ( a ). This legal equivalent to a tap dance was needed to satisfy concern that the U . S . copyright regime did not meet the international standard .
9
The U . S . Patent and Trademark Office is often called upon by the Executive Branch to assist in various international policy issues concerning IP , other than just patents and trademarks . For instance , the USPTO recites a policy statement regarding how the U . S . fulfills its trade secrecy obligations as a member of the World Trade Organization and under the Agreement on Trade Related Aspects of Intellectual-Property Rights . That statement says , “ While state laws differ , there is similarity among the laws because almost all states have adopted some form of the Uniform Trade Secrets Act . The language of the Uniform Trade Secret [ sic ] Act is very similar to the language in TRIPS .” http :// www . uspto . gov / patents-getting-started / international-protection / trade-secret-policy . One can readily see that such language is not as strong as the government might like to have when urging other countries to have strong trade secrecy laws , and the DTSA is intended in part to ensure that the federal government can speak more definitively about the protections provided under U . S . law .
10
Magic Leap , Inc . v . Gary Bradski and Adrian Kaehler , 5:16-cv-02852-NC ( N . D . Cal . May 26 , 2016 )
11
Space Data Corp . v . X , et al ., 5:16-cv-03260- EDL ( N . D . Cal . June 13 , 2016 )
What ’ s New : The Defend Trade Secrets Act www . vtbar . org THE VERMONT BAR JOURNAL • SUMMER 2016 21
18 U.S.C. § 1836
https://www.whitehouse.gov/the-press-office/2016/05/11/remarks-president-signing-s1890-defend-trade-secrets-act-2016
3
http://www.uniformlaws.org/shared/docs/
trade%20secrets/utsa_final_85.pdf
4
Vermont Trade Secrets Act, 9 V.S.A. §§ 46014609. Notably, it took several years before the
Vermont Supreme Court had occasion to decide a case based on Vermont’s version of the
UTSA. Dicks v. Jensen, 172 Vt. 43, 768 A.2d
1279 (2001).
5
134 S. Ct. 2347 (2014)
6
18 U.S.C. § 1831 (1996, as amended 2013)
7
See, e.g., Office of the U.S. Trade Representative, 2015 Special 301 Report at 20, available at
https://ustr.gov/issue-areas/intellectual-property/special-301/2015-special-301-review; Administration Strategy on Mitigating the Theft of U.S.
Trade Secrets (IPEC, February 2013), available at
https://www.whitehouse.gov/sites/default/files/
omb/IPEC/admin_strategy_on_mitigating_the_
1
2
www.vtbar.org
theft_of_u.s._trade_secrets.pdf.
8
Consummated with the Berne Convention
Implementation Act of 1988 (now codified at
17 U.S.C. § 116A), the most recent push for accession came in the early 1980’s as concerns
rose about the ability of U.S. copyrights to be
sufficiently protected overseas. See, Senator
Orrin Hatch’s extensive treatment of this history in “Better Late Than Never: Implementation of the 1886 Berne Convention,” 22 Cornell Int’l L.J. 171 (1989), available at: http://
scholarship.law.cornell.edu/cgi/viewcontent.
cgi?article=1212&context=cilj. One prerequisite
to acceding to the Berne Convention was establishing that the U.S. protect not merely the economic rights under copyright law, but the moral
rights as well. Moral rights include the so-called
rights of “integrity” and “paternity.” The right
of integrity allows an artist, for instance, to object to “mutilation” of a work—in the modern
world, a “mash-up” might be an example. The
right of paternity guarantees that a work will always be attributable to its creator. It was resistance to moral rights that for a century prevented the U.S. from being able to accede to
this treaty. In the 1980’s, the U.S. argued that
a patchwork of its state and federal laws, in areas ranging from defamation to privacy, already
provided equivalent protection. See, Natalie
C. Suhl, “Moral Rights Protection in the United
States Under the Berne Convention: A Fictional
Work?”, 12 Fordham Intellectual Property, Media and Entertainment L.J.: 1203 (2002), available at: http://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1239&context=iplj.
And,
just to be sure, a minor amendment was made
to the U.S. Copyright Act in 1990 to grant rights
of attribution and integrity, albeit limited to the
visual arts. 17 U.S.C. § 106(a). This legal equivalent to a tap dance was needed to satisfy concern that the U.S. copyright regime did not meet
the international standard.
9
The U.S. Patent and Trademark Office is often called upon by the Executive Branch to assist
in various international policy issues concerning
IP, other than just patents and trademarks. For
instance, the USPTO recites a policy statement
regarding how the U.S. fulfills its trade secrecy
obligations as a member of the World Trade Organization and under the Agreement on Trade
Related Aspects of Intellectual-Property Rights.
That statement says, “While state laws differ,
there is similarity among the laws because almost all states have adopted some form of the
Uniform Trade Secrets Act. The language of the
Uniform Trade Secret [sic] Act is very similar to
the language in TRIPS.” http://www.uspto.gov/
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