by Lee Gesmer | Nov 6, 2007 | Trade Secrets
As the lawyer drifts off to sleep the fantasy of the “perfect” IP case drifts across his mind. Not a patent case (way, way too complicated), not a copyright case (too boring if straightforward, and too difficult if not) ), not a trademark case (surveys, secondary meaning, no thanks), but a straightforward, meat and potatoes, trade secret case: there is a trade secret, and someone stole it, case over.
The lawyer falls asleep thinking about the perfect case, a big case, but a realtively easy case. After all, most cases are so hard, everyone deserves an easy case once in a while, right?
In the lawyer’s dream a former former employee of the lawyer’s client (lets call the employee him Jameel Ahed, or simply Mr. Ahed) has started a competitive company. The client has obtained the competitive product, taken it apart, and concluded that Mr. Ahed very likely used the client’s trade secrets to create the product. The lawyer files suit, and hires private investigators to follow and observe Mr. Ahed after the lawsuit is served on him.
A thought drifts through the lawyer’s dreams – the stakes, the stakes need to be high, very high for this to be a good case. His unconscious mind provides the answer: his client and Mr. Ahed’s company are competing for a $280 million contract to sell “tactical robots” to the U.S. military, to be used to detect and disable improvised explosive devices (“IEDs”) in Iraq and Afghanistan. If he can prove trade secret misappropriation his client will clinch the contract. Robots, war, the security of U.S. troops, big dollars, what could be better than that?
In the dream, the very same day that Mr. Ahed’s new company is served with the trade secret suit the investigators observe Mr. Ahed gathering 100 backup and archival CD-ROMs and several hard drives, which contain designs of his company’s product, as well as other key equipment. Mr. Ahed puts these items in a duffel bag, and the next day puts them in a dumpster, from which the lawyer’s investigators immediately recover them as evidence. In fact, Mr. Ahed makes several trips between his office and the dumpster, and the investigators follow him, unseen.
Mr. Ahed doesn’t discard the CD-ROMs, however. Instead, he purchases a shredder, which he uses to destroy them. In fact, when the first shredder jams, he quickly purchases a second shredder in order to finish the job.
Mr. Ahed also purchases a drive scrubber, which he uses to obliterate data on the laptop computer he has owned since he was employed by the client. The next day, he uses the scrubber on several computers at his company’s offices.
All of this is observed by the lawyer’s private investigators.
As the lawyer falls into REM sleep his dreams become even more vivid: he obtains a court order that allows him, protected by U.S. Marshals and computer forensic experts, to enter Mr. Ahed’s company’s office and his home and seize evidence. As they enter Mr. Ahed’s apartment his laptop computer screen shows that its data has been destroyed by the drive scrubbing software program and Mr. Ahed is observed trying to hide this computer under his bed. The laptop is found, opened, and the screen is photographed as evidence.
The lawyer goes to court seeking a preliminary injunction. He gets a smart, hard working and conscientious federal judge, Judge Nancy Gertner. Judge Gertner holds a four day hearing on the injunction. Mr. Ahed’s credibility is totally destroyed by reason of his actions, and the judge refuses to believe anything he says. The judge enters an injunction that disqualifies Mr. Ahed’s company from obtaining the military contract. The lawyer’s client get the contract.
The lawyer wakes up. It’s 3:00 in the morning. All of the problems waiting for him at work, large and small, collide in his brain. All of the bad cases, the hard cases, the dog cases, the cases he lost but should have won, drift through his mind. His dream, the greatest victory of his life, the “easy one,” fades fast. In the morning, when he wakes up, he’s completely forgotten the dream. It’s cold and raining outside and he’s exhausted from a poor night’s sleep. Groaning, he drags himself out of bed to face the commute.
This could never happen, right? Click the image …..
by Lee Gesmer | Nov 5, 2007 | Trade Secrets
iRobot’s trade secret case against Robotic FX has attracted a fair amount of attention in Boston, and has been reported in detail by Xconomy here.
On Friday Judge Gertner issued her decision on iRobot’s motion for preliminary injunction, which has been posted by Xconomy here.
I’ll update this posting once I’ve had a chance to read her Order in detail.
by Lee Gesmer | Oct 12, 2006 | Copyright, Trade Secrets
In Cambridge Literary Properties, Inc. v. W. Goebel Porzellanfabrik Magistrate Judith Dein issued an extensive Report and Recommendation (adopted by Judge Nancy Gertner) on issues relating to the statute of limitations as a bar to a claim of copyright infringement. The case involves facts going back as far as 1931 which involved the drawings of Berta Hummel, and is a valuable primer on the defense of statute of limitations in copyright actions.
District court Judge Gorton has issued a decision in Echomail, Inc. v. American Express denying IBM’s (a co-defendant) motion to dismiss claims of trade secret misappropriation, unfair competition and violation of M.G.L. c. 93A.
In T-Peg, Inc. v. Vermont Timber Works, Inc. the First Circuit applied the Architectural Works Copyright Protection Act for the first time in this circuit. Reversing summary judgment for the defendant and remanding for trial, the court not only recapped the legal standard for substantial similarity (the test by which infringement is judged under copyright law), but clarified its position on expert testimony in copyright cases, making clear that there is no per se rule against expert testimony, and that whether or not it is appropriate depends on the complexity of the subject matter at issue.
by Lee Gesmer | Mar 27, 2006 | Business Lit. Session, Procedure, Trade Secrets
Trade Secrets, Procedure. Warning: if you’re seeking discovery in a trade secret case in the Suffolk Business Litigation Session make sure that you have (a) provided the court with a detailed description of your trade secrets, and (b) filed a protective order that strictly complies with the Uniform Rules of of Impoundment.
For a recent decision making these points, written by Judge Allan Van Gestel in the Suffolk Business Litigation Session, click [here]. The decision, Tourtellotte Solutions, Inc. v. Tradestone Software, Inc., was featured on the front page of Massachusetts Lawyers Weekly last October. In a nutshell, the plaintiff asked for expedited discovery (in other words, the right to take discovery on a schedule faster than allowed in the ordinary course by the rules of civil procedure), so that the plaintiff could obtain evidence necessary to bring a preliminary injunction against the defendant. The plaintiff’s basic claim was that the defendant had engaged in “software misappropriation,” a term that Judge Van Gestel stated “sounds very much like trade secret misappropriation.”
The judge denied the motion, stating: “a detailed description of what is claimed to be a trade secret must be provided and a protective order of some sort needs to be worked out.”
Neither conclusion is surprising in the least. Many decisions in trade secret cases have held that the plaintiff must identify its trade secrets with particularity. The courts recognize that to permit the plaintiff to launch a “fishing expedition” into the defendant’s technology before identifying its trade secrets is fundamentally unfair. California has even codified this rule by state statute. What is surprising is when (as we have seen from time-to-time), a court does not compel a plaintiff to describe its trade secrets with particularity before commencing discovery.
On the subject of an acceptable protective order, Judge Van Gestel was offended that the protective order proposed by the plaintiff did not comply with the Uniform Rules of Impoundment, which require that a “sealed” filing (in other words, a filing in a sealed envelope that is segregated from the case file that is available to the public) be preceded by a motion and an affidavit explaining why the court should deviate from the standard procedure of making all documents filed with the courts available to the public. Because filing documents “under seal” requires the clerk’s office to go to the inconvenience of identifying and segregating these filings (with the concomitant risks of lost documents and inadvertent disclosure), the party seeking this exception must obtain the court’s permission before putting the court to this inconvenience. Lawyers requesting protective orders in the Business Litigation Session (which are standard in trade secret cases and many other types of business litigation) should keep Judge Van Gestel’s warning in mind. An example of a protective order referencing the Uniform Rules of Impoundment can be found here: [link]
