12
MiMfg Magazine
March 2018
“
immediate action is required.
Unfortunately, once a theft has
occurred, it can often be too late for
anything more than legal action.
“It is difficult to ‘put the cat back
into the bag’ once a trade secret is
publicly disclosed or revealed;
therefore, when a company learns
that a trade secret has been
misappropriated, it should seek
to limit such disclosure by seeking
an injunction or TRO to prevent
further dissemination (if possible),”
explained Thomas J. Appledorn,
a partner with Honigman Miller
Schwartz & Cohn LLP. “Unfortu-
nately, there are times where it is
just too late, and money damages
may be the only remedy, even
though, all too often, money
damages simply cannot make the
aggrieved party whole.”
During the MFG Law Summit,
hosted by MMA in February, the
Honigman team suggested some
reasonable measures for manufacturers
seeking to protect confidential
information, including:
• Requiring all visitors and other
information recipients sign a
confidentiality agreement
• Maintaining a visitor log-in of
all third parties who enter and
exit a place where confidential
information is kept, or confidential
processes, are utilized
• Keeping written trade secret
disclosures in a locked location
• Limiting access to computer
files containing trade
secret disclosures
Get More!
Bookmark these resources:
• Michigan Intellectual
Property Law Association
(www.mipla.org)
• United States Patent and
Trademark Office
(www.uspto.gov)
• World Intellectual
Property Organization
(www.wipo.int)
Most manufacturers either
know someone personally
or have heard stories of
companies failing to bounce
back after the loss of
intellectual property. While
today’s employer has
access to new technology
and new opportunities,
manufacturers also face
security threats their
predecessors never
had to imagine.
”
— Chuck Hadden, MMA
Many legal professionals are
proficient in IP litigation and can
assist victimized manufacturers.
Civil recourse through state and
federal court can result in cease and
desist orders and payment of
monetary damages. While the fees
resulting from such cases are often
paid by the party responsible for the
theft, there is no fixing the time spent
preparing or litigating the grievance.
On the other hand, copyright
theft does not require such a quick
reaction as it is not confidential.
While still important, the speed
required to restrict further use of
your copyright IP is often less.
“To prove copyright infringement,
one must show (i) access (i.e., that
the alleged infringer had access to the
underlying work), and (ii) substantial
similarity (i.e., that the alleged
infringing work is substantially
similar to the copyrighted work),”
explained Appledorn. “If a court is
satisfied that these elements are
met, it may (i) issue an injunction
to prevent the infringer from using
the copyrighted work moving
forward, or (ii) award money
damages to the copyright owner.”
Whether you require a speedy
resolution to confidential trade
secrets or simply want another
party to stop using your IP, efforts
that result in litigation are all
reactionary and allow for solutions
after your IP has been stolen. To
save time, money, resources and
your reputation, a proactive response
is almost always preferred.
Creating the Correct
Culture to Protect IP
“Manufacturers should begin by
understanding your risk profile,
what IP is at risk, what is the
economic value of the IP assets,
what is the probability of loss, and
how much of that economic value
loss are you willing to tolerate,”
advised Farhat. “This thought
process should lead to quantifiable
risk tolerance and in some cases
risk appetite that can then guide
the investment decisions needed
safeguard IP.”
You can begin developing effective
IP policies through employee
education. All employees should
receive a copy of the company’s
intellectual property policy and
indicate their understanding of the
policy. Employers may also ask new
hires to sign an assignment agreement
assigning any IP developed during
the course of employment to the
proper source.
“When an employee is hired, he
or she should be required to sign a
nondisclosure agreement barring
the sharing of any of the company’s
confidential information during
and after employment with the
company,” said Appledorn. “You
don’t want an employee leaving the
company and taking the customer
list in order to start a competing
firm. The nondisclosure agreement
can be incorporated into a general
employment agreement.”
Manufacturers should regularly
check their operations to identify