Enigma Forensics CEO & President, Lee Neubecker discusses the of the Defend Trade Secrets Act with Trademark Attorney Brian Michalek.
The transcript of the Defend Trade Secrets Act 2016 video follows:
Lee Neubecker: I’m here today with Brian Michalek. He’s a trademark and IP attorney. Brian tell us what you’ve come on the show to talk about today?
Brian Michalek: Yeah, well first of all thanks for having me Lee. I appreciate you coming down here and spending some time with me today. You know what I wanted to talk about today is kind of some new applications of the Defend Trade Secrets Act. Which is, it’s about two years old now but it’s basically a federal cause of action concerning trade secret law.
Lee Neubecker: And what this means basically is if you’re an employer and you have someone who stole trade secrets, it offers you an opportunity to file in federal court as opposed to the state courts statutes.
Brian Michalek: Yeah, I think that’s right. And kind of taking like a step back, you know prior to 2016, what we had when we were talking about trade secret law were really a bunch of different states that had their own specific type of trade secret statutes. Some of these statutes were in fact pretty similar and shared a lot of consistencies but there were others that kind of had their own nuances and what that meant was that trade secret jurisprudence wasn’t completely harmonized. And it made it a lot more difficult to account for situations where we often encounter in the digital age where misappropriation of trade secrets happens across state lines or if we have a scenario where an individual who misappropriates a trade secret, resides in one state and the server in which they access to take the trade secret is in another state. We found that there was a lot of clunkiness with trying to figure out which state law would apply and how we could best go forward to making sure that the owner of the trade secret could get restitution appropriately. So, really what we have now in 2016 is a federal cause of action as you stated correctly that allows us to go straight into the federal courts and manage trade secret litigation from that vantage point. And I think it’s important to say also, that what we’re having is not a federal law that preempts state law but it supplements it. So, both can be acted upon.
Lee Neubecker: So, here in Illinois we have the Computer Fraud and Abuse Act that is often one venue. Why would someone who’s contemplating filing litigation against an employee who stole trade secrets here in Illinois. Under what circumstances would they want to try to pursue the Defend Trade Secret Act, a federal option as opposed to the Computer Fraud and Abuse Act.
Brian Michalek: Yeah, well it’s really going to depend on the particular fact scenario. That’s an issue here. The Computer Fraud and Abuse Act, you know, that generally is tailored to somebody who goes into a computer without authority to do so or oversteps their bounds and oversteps their access. So, it’s a little bit of a different cause of action but then again, there are situations where you have a fact pattern where an employee could run afoul of both statutes. Both the Computer Fraud and Abuse Act as well as the new federal Defend Trade Secrets Act.
Lee Neubecker: So, what are some of the advantages for someone who perceives a claim using the Defend Trade Secrets Act?
Brian Michalek: Yeah, I think there several advantages. I kind of hit on some of them earlier when we’re talking about the kind of this discord among different state laws and how they’re actually applied to certain fact patterns. But one advantage is that you get access to the federal court system. Previously when you have a state law you can do some things to get the claim into federal courts but it takes a little bit more, little more effort and you often times need to show that there’s diversity or you need to tack on a federal cause of action like the Computer Fraud and Abuse Act in order to do so. Right now with this cause of action, we’re actually allowed to file in federal court right from the get-go. And you know, there’s certain bit of strategy and advantage for employers to do that from an efficiency standpoint, from a practicality standpoint which allows to redress this misappropriation as soon as possible because you know, we’re dealing with a situation many times that when you have a trade secret that’s misappropriated, you need to act very quickly. Otherwise it can be disseminated and ultimately lost if things aren’t done to stop that.
Lee Neubecker: I understand the Act requires you to present your case of sorts as to why there’s an urgency to seize this information, when you’re trying to get the evidence. What would you try to do before you file your case to bolster your chances of getting a judge to grant you relief in terms of obtaining your trade secrets and getting that information back?
Brian Michalek: Yeah, that’s a good question. I think what you’re getting at is the defend Trade Secrets Act has a very special and new kind of prong to it. It’s a mechanism for a civil seizure and what that basically says it gives the court the power to and it’s ex parte I should say. So, it allows you if you feel that your trade secret is misappropriated to go to the court ex parte and explain to the court why you need redress and you need to, you know get your trade secret back or have it deleted of someone’s computer who misappropriated it or whatever recourse is appropriate. Now, this is new to the 2016 statute but there are some very specific hurdles that you need to get over. The statute itself says that this is really only for extraordinary circumstances and you have to show that other equitable means would not serve your interest like a preliminary injunction or a temporary restraining order. So, it is kind of a special remedy that’s offered and I think you know, we’ve had the statute for about two years now and there’s only been a handful of cases. There’s one in particular where the judge in fact did grant a civil seizure order and one of the reasons was because they found that failure to do so would cause the trade secret to be disseminated and ultimately lost. And really the next step there is to get the Federal Marshal Service involved and they will go in and actually reclaim that trade secret or delete it or make sure that appropriate recourse is made.
Lee Neubecker: Now, when you’re filing, would you encourage your clients to have an independent forensic analysis done with affidavit to support their claims? Do you think that would help the likelihood of actually getting that relief?
Brian Michalek: It’s again, it’s going to depend on the situation but I think kind of what you’re getting us is when you’re dealing with something that is taken from a computer. You know, we’ve dealt with situations where and I think these are becoming more and more common in the digital age, where an employee will do something with his computer before he quits and goes to competitor, he will transfer a file or copy a file or do something he’s not supposed to and the employer finds out and if they believe that there is some type of misappropriation or the employee took something that he worked here or she was not supposed to you know, they may have cause of action under this this federal action. And to your point, a lot of times doing a dealing with computers you do have to get a forensic expert involved so that you can actually know what was happening because people sometimes thinks that they can delete something or they can transfer it or hide it and you know, I’ve dealt with this enough times and I know you too, you have to Lee is that, you know, it’s very, very difficult to actually cover up your tracks unless you really know what you’re doing and that’s really where a forensic expert can help. Is when somebody tries to cover up their missteps, their tracks and if you get the right expert involved early, then you can at least have that evidence to really show the fact that or what was going on and why you are entitled to remedy under this federal act.
Lee Neubecker: And so Brian can you tell everyone some of the benefits, financially filing under this act?
Brian Michalek: Well, I think what you’re referring to is this act has one other wrinkle. It’s known as the whistle blower provision and basically it allows employees to blow the whistle and disclose what could be a trade secret and very limited fashion, if they believe that there is some wrongdoing. On the flip side of things, employers if they want to take full advantage of this act and maybe receive attorney’s fees should they win or exemplary damages in certain situations. They’re now tasked with including this whistle blower provision in employee agreements. Meaning they have to make note of it and specifically instruct the employee that this is an option and the mechanisms for which apply.
Lee Neubecker: So, the fully benefit from those people should revisit their paperwork, their confidentiality agreements and whatnot with their vendors and employees. Is that something that you could assist people with?
Brian Michalek: Yeah, absolutely. That’s something that we’re happy to talk with you about and if need be, we’re going to help and assist.
Lee Neubecker: Great, well thanks for being on the show.
Brian Michalek: All right thanks so much.
Lee Neubecker: Take care.