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