Details
- Provides an accessible introduction to trade secret law in the United States
- Offers "best practices" for businesses and organizations that need to create, maintain, protect, and enforce their own trade secrets and to avoid misappropriating others
- Details how to respond to the loss of trade secrets, from investigation to litigation
- Helps companies protect their trade secrets by explaining how to adopt policies that prevent the loss of confidential information
- Written in a case-study format which shows real-world examples of trade secret litigation and the lessons that can be learned from them
Trade secrets - stealing them, protecting them, enforcing them - are increasingly big business. To understand why, consider any information you know about your job that you're supposed to keep confidential. That information may qualify as a trade secret. Trade secrets concern everyone; from the engineer who invents a better mousetrap to the marketer who knows pre-release prices; from the CEO who drafts the company's five-year plan to the HR rep who manages the organizational chart, and so on.
Keeping Secrets: A Practical Introduction to Trade Secret Law and Strategy is an accessible primer on all things trade secret. It examines the audacious schemes of trade secret thieves by presenting dozens of case studies and the lessons to learn from them. It also offers best practices for protecting trade secrets from theft, investigating a suspected breach, and enforcing a trade secret in court and other forums. Preeminent intellectual property lawyers, Darin Snyder and David Almeling have written this book for anyone who wants to learn about trade secrets: including corporate executives and engineers, judges and students, even attorneys not practicing trade secret law who need general information on the subject.
Readership: Business people; engineers; judges; law students; attorneys not practicing trade secret law who need general information on the subject
About the Authors
Acknowledgments
Disclaimers
Introduction
1. The Trade Secrets of Boutique Hotels
2. Should You Be Reading This Book?
3. The Scandalous Structure of This Book
Part I: The Basics
Chapter 1
Trade Secrets - The Basics
1. Apache Helicopter Airstrikes and Lady Gaga
2. An Introduction to Trade Secrets
3. Trade Secrets - Definition and Four Famous Examples
i. Information
ii. Secrecy
iii. Value
iv. Reasonable Efforts
4. Trade Secret Theft: Defining "Misappropriation"
5. Remedies for Trade Secret Misappropriation
i. Nonmonetary Relief
ii. Monetary Relief
6. Criminal Trade Secret Law
7. Trade Secrets vs. Patents: When Trade Secrets Are the Best Strategy, and When They're Not
8. Summarizing Trade Secret Law
Chapter 2
Trade Secrets in Context: Why Trade Secrets Are Increasingly Important To Businesses, Employees, and the Economy
1. The Customer List in the Age of Google, LinkedIn, and Facebook
2. The Evolving Technologies, Social Norms, Politics, Economics, and Dozens of Other Factors that Shape the Use and Misuse of Trade Secrets
3. Trade Secrets Were Slow to Develop, Quick to Proliferate
4. New Technology
5. Employee Mobility and Attitudes
6. Increasing Value
7. The Flexible (and Expanding) Scope of Trade Secret Law
8. The Future of Trade Secrets
Part II: Four Keys To a Successful Trade Secret Strategy
Chapter 3
Key No. 1: How to Recruit, Hire, Retain, and Terminate Employees
1. Mr. Chang's $200 Million "Resignation"
2. Employees Are the Primary Source of Trade Secret Misappropriation
3. How to Recruit and Hire Employees
a. Vet Applicants with an Eye Toward Trade Secret Protection
b. Agreements with Incoming Employees
c. Hiring from Competitors
4. How to Train Employees
5. How to Terminate Employees
6. An Argument Against Doing Nothing
7. How to Avoid a $200 Million Resignation
Chapter 4
Key No. 2: Information Security
1. Founder of Alpha Mining Systems: "I was like a husband whose wife was getting it on the side."
2. The Right and Wrong Lessons from the Sordid Tale of Alpha's Plundering
3. One Size Does Not Fit All
4. Basic Protections for All Information
a. Limit Access to Information to Only Those Who Need It
b. Place Legends on Documents
c. Implement an Information Tracking System
d. Dispose of Information Properly
e. Limit What Information Leaves the Company
f. Encourage Reporting of Violations and Investigate and Punish Violations
5. Basic Protections for Electronic Information
6. Non-Memorialized Data
7. Rules for Receiving Trade Secrets from Outsiders
8. Government Liaisons
9. Information Security Should Not Be Static
Chapter 5
Key No. 3: Physical Security
1. A Business Feud Turns Toxic
2. The Non-Digital World of Break-Ins and Dumpster Diving
3. Securing Physical Confidential Information and the Facilities that House Such Information
4. Be Wary of Visitors
5. A Closing Note About Employee Resistance
Chapter 6
Key No. 4: Agreements to Protect Trade Secrets
1. Dampening the Aloha Spirit
2. The Importance of Written Agreements
3. Confidentiality and Invention Assignment Agreements with Employees
4. Confidentiality Agreements with Outsiders
5. Parties That Refuse to Sign Confidentiality Agreements
6. Noncompetition and Nonsolicitation Agreements
7. Confidentiality Agreements Protect Against Most Threats
PART III: Trade Secrets in Practice
Chapter 7
Investigating Suspected Trade Secrets Theft
1. Informix to Oracle's Employees: "Caution: Dinosaur Crossing"
2. Avoiding Informix's Fate
3. Act Immediately in Response to Suspected Trade Secret Misappropriation
4. Attorneys Should Direct the Investigation
5. Conducting a Trade Secret Investigation
a. Gathering Information
b. Interviews
c. Monitoring
6. The Investigation Is Over. Now What?
a. Do Nothing
b. Fix the Leak
c. Talk to the Alleged Misappropriator
d. Send Letters
e. Alternative Dispute Resolution
f. File a Civil Lawsuit
g. Notifying Law Enforcement Officials
7. Look First, Leap Second
Chapter 8
Knowing What You've Got and Whether You're Doing Enough to Protect It:
A Trade Secret Audit
1. An "Information Addict " Misappropriates $400 Million in DuPont's Trade Secrets
2. A Trade Secret Audit Defined
3. To Audit, or Not to Audit?
4. The Audit Team
5. The Content of a Trade Secret Audit: Identifying the Company's Trade Secrets, Their Location, Their Value, and What Is Being Done to Protect Them
6. The Audit Report
7. Acting on the Audit Report
8. Audit, Report, Then Repeat (a Few Years Later)
Chapter 9
Trade Secret Litigation: Working with Counsel
Notes
Table of Cases
Index
Darin W. Snyder, Partner, O'Melveny & Myers LLP, and David S. Almeling, Counsel, O'Melveny & Myers LLP
Darin W. Snyder is a partner in the San Francisco office of O'Melveny and Myers and Chair of the Intellectual Property and Technology Practice in the Litigation Department. He has been recognized as one of the leading trade secret attorneys in the United States, and has written and spoken extensively on the subject. David S. Almeling is a counsel in the San Francisco office of O'Melveny and Myers and a member of the Intellectual Property and Technology Practice in the Litigation Department. He represents clients in intellectual property litigation, with a primary focus on patent and trade secret litigation. He has authored several articles on the subject of trade secret law.
"Business, like magic, requires secrecy. It's often the detail behind the scenes that makes the difference between the surprisingly successful company and its lackluster competitors. Building on this simple insight, Darin Snyder and David Almeling have forged a comprehensive and practical guide on how to recognize, use, and protect valuable trade secrets. Written like a 'how to' guide, but with a litigator's attention to detail, Keeping Secrets: A Practical Introduction to Trade Secret Law and Strategy is a must have for every general manager and lawyer who hopes to see business and clients thrive using their unique informational assets."
--Richard J. Lutton, Jr., Former Chief Patent Counsel, Apple Inc.
"Darin Snyder and David Almeling have written an excellent book that fills a void. Using contemporary cases and current examples that will resonate with both businesspeople and lawyers, Keeping Secrets is an indispensable primer that informs readers about trade secret law in a very accessible manner. Perhaps most importantly, this book offers practical suggestions for companies who want to build an effective trade secret protection program."
--Janet Craycroft, Director, Legal Counseling at Intel Corporation and Incoming Chair of the Trade Secret Committee of the American Intellectual Property Law Association
"Keeping Secrets is a real opportunity for those who want a basic introduction to trade secrets without investing a lot of time. It maintains focus on the four most important areas - employees, physical and data security, and contracts - where this knowledge can be applied immediately. And its lively, journalistic style keeps the reader engaged, making points with memorable stories taken from actual cases."
--James Pooley, Former President of the American Intellectual Property Law Association
