at hand to quickly and convincingly provide such evidence to a court?
• What is the degree of competition
between you and his new employer?
•How much similarity is there between the two jobs?
• Was the departing employee forthcoming or cagey about the new position and employer?
• Are you able to point with specificity
to the trade secrets of concern?
• Has there already been use of the
trade secrets by your company, or are
they yet to be used to your commercial advantage?
• Were there any contracts between
you and the departing employee that
gave rise to obligations of confidence
or obligations not to compete?
• Does the new employer have a clear-cut policy against the use of others
trade secrets?
• Is it going to be possible to “sanitize”
the new position by preventing improper use of your trade secrets?
There are a couple of other issues to
consider here, which are directly drawn
from the efficiency of your trade secret
program.
One of these is the rather murky distinction between “inevitable disclosure”
and “probable disclosure.” While the distinction probably makes you roll your
eyes at the attorney word-smithing that
goes on, there is a very real difference in
the proof required. Probable disclosure
need only be supported with enough evidence and weight of evidence to establish
a presumption, while inevitable disclosure
is only supportable by a finding that the
defendant has the confidential information and that he will not be able to avoid
using it to unfairly compete against you.
Assume the worst in your preparations for
suing a departing key employee and attempt to have on hand evidence sufficient
to meet the higher standard of the two.
Another issue that commonly arises is
the existence of a non-compete agreement
or non-compete clause within an employment agreement. The biggest distinction
between a case for breach of a non-compete agreement and one that is based upon
Enforceable covenants are approached
state-by-state, and must be tailored to
specific facts surrounding the employment. You probably are not going to be
successful in preventing your chief polymer chemist from becoming a field salesman for your competitor, no matter how
much better a salesman he might be due
to his in-depth knowledge of the resin systems. And, it goes without saying that this
covenant should be paired with a non-disclosure agreement whereby each key employee agrees not to disclose trade secret
information he acquired during his employment with you. The departing employee and his new employer should be
made aware that you are watching, and if
your trade secret information is used, you
will hold them liable.
inevitable disclosure is in the enforcement
that is available to you. If you are successful in convincing a court that the defendant will inevitably disclose your trade
secrets, you are not required to prove actual harm in order to get your injunction.
On the other hand, if you got into court
under a breach of contract claim for non-competition, in many states, you don’t get
an injunction unless you can prove actual
harm, and by that most courts mean real,
measurable harm usually measured in
real, American dollars in lost sales.
Sum it up? The Doctrine of Inevitable
Disclosure might best be explained by
the Rolling Stones song, “You Can’t Al-
ways Get What You Want.” Because,
“No, you can’t always get what you
want.” But, you might be able to tem-
porarily prevent someone from using
your trade secrets long enough to estab-
lish your market lead, though you would
prefer that prohibition to last forever.
“But, if you try sometime,” assuming
you have done your homework and
readied the Bastille for war, “you might
just find, you get what you need.”
Thanks, Mick! You still rock! CW
www.coatingsworld.com
October 2012
