Alleged Misappropriation of Trade Secrets and Confidential Information Counseling and Litigation

Originally held on Wednesday, November 18, 2020 | 12:00 pm – 1:45 pm

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Program Chair:

Richard B. Friedman
Richard Friedman PLLC

  • This program will examine how the Defend Trade Secrets Act of 2016 has impacted trade secret litigation, whether the statute seems to be accomplishing the objectives articulated by its proponents, and its pros and cons. It will also examine the viability of state law trade secret claims and other intellectual property litigation which is sometimes commenced when employees join a competitor

    Program Fee:
    $149 for Members | $249 for Nonmembers

    Members who are Recent Law Graduates, Newly Admitted Lawyers (admitted for the first time in any state or country 2018-2020), In-House/Corporate Counsel, Judges, or attorneys that practice within the Government, Academic or Not-for-Profit sectors attend this program for free.

  • Loren Gesinsky
    Seyfarth Shaw LLP

    Robert P. Haney Jr.
    Covington Burling LLP

    Gabrielle Levin
    Gibson Dunn & Crutcher LLP

    Mara B. Levin
    Blank Rome LLP

    Lauri F. Rasnick
    Epstein Becker & Green, P.C.

    John Siegal
    Baker & Hostetler LLP

  • 12:00 – 12:05 Introduction of Panelists & Program Overview

    Richard B. Friedman

    12:05 – 12:10 What is the Difference Between Trade Secrets and Confidential Information?

    Lead Panelist: Mara B. Levin
    Panelists: Richard B. Friedman ; Loren Gesinsky; Robert P. Haney Jr.; Gabrielle Levin; Lauri F. Rasnick & John Siegal

    12:05 – 12:20 What to Do When (i) The Organization has Reason to Believe an Employee
    Lead Panelists: Robert P. Haney Jr.& John Siegal
    Panelists: Richard B. Friedman; Loren Gesinsky; Mara B. Levin.; Gabrielle Levin

    May Have Taken Confidential Information or (ii) An Employee Has Given Notice?

    • Review all appropriate contractual provisions.
    • Has all confidential information been suitably secured?
    • Determine nature and scope of any investigation.
    • Ensure that internal investigation will be thorough.

    Lead Panelists: Robert P. Haney Jr.& John Siegal
    Panelists: Richard B. Friedman; Loren Gesinsky; Mara B. Levin.; Gabrielle Levin & Lauri F. Rasnick

    12:20 – 12:35 When is a Forensic Investigation Undertaken?

    • Depends on level of employee, whether going to a competitor,
    • and existence of a non-compete provision or agreement.
    • Level I is often an in-house investigation.
    • Possible problems with in-house investigations.
    • When to engage an outside forensic expert.
    • Importance of chain of custody of devices and digital information.

    Lead Panelists: Loren Gesinsky, Lauri F. Rasnick & John Siegal
    Panelists: Richard B. Friedman; Robert P. Haney Jr; Mara B. Levin & Gabrielle Levin

    12:35 – 12:45 Exit Interviews

    • Issues in deciding whether and when to conduct exit interviews.
    • Generally conducted by HR but dependent on the results of the internal investigation. Interviewer is a possible witness. Should in-house counsel ever be present?

    Lead Panelists: Gabrielle Levin & Robert P. Haney Jr.
    Panelists: Richard B. Friedman; Loren Gesinsky; Mara B. Levin; Lauri F. Rasnick & John Siegal

    12:45 – 12:55 Letters To Be Sent

    • Best practice is to have company personnel to send a “Good Leaver” letter to non-low level employees to return all electronic equipment and maintain all company information in confidence.
    • Should a letter be sent to low level employees?
    • What are the different versions of letter to departing employee?
    • “Bad Leaver” letter seeking affirmation of future compliance with
    • company policies and return of any company information.
    • When to propose a Data Return and Remediation Agreement.

    Lead Panelists: Gabrielle Levin & & Mara B. Levin
    Panelists: Richard B. Friedman; Loren Gesinsky; Robert P. Haney Jr.; Lauri F. Rasnick & John Siegal

    12:55 – 1:05 When to use a third party vendor for the remediation.

    • When to seek a sworn statement from the former employee as to the disclosure and use, if any, of the information at issue.
    • When to send a letter to the future or new employer. Is that company a competitor?
    • What are the different versions of letter to send to future or new employer?

    Lead Panelists: Robert P. Haney Jr. & Lauri F. Rasnick
    Panelists: Richard B. Friedman; Loren Gesinsky; Gabrielle Levin.; Mara B. Levin; Lauri F. Rasnick & John Siegal

    1:05 – 1:20 Possible Resolution Pre-Litigation

    • Settlement whereby former employee agrees not to solicit or engage with certain identified clients of former employer.
    • Other possible settlement terms such as excluding access to certain products, research issues, etc.
    • Other possible “soft dollar” settlement terms?

    Lead Panelists: Loren Gesinsky & Mara B. Levin

    Panelists: Richard B. Friedman; Robert P. Haney Jr.; Gabrielle Levin.; Mara B. Levin; Lauri F. Rasnick & John Siegal

    1:20 – 1:30 Litigation Issues

    • Venue selection (state versus federal, state versus state, FTSA issues).
    • Cost issues to consider.
    • Typically seek a TRO alleging contractual, common law, and possibly DTSA claims for alleged misappropriate of trade secrets and misuse of confidential information.

    Lead Panelists: Loren Gesinsky &John Siegal
    Panelists: Richard B. Friedman; Robert P. Haney Jr.; Gabrielle Levin.; Mara B. Levin & Lauri F. Rasnick

    1:30 – 1:40 Whether to sue successor employer for tortious interference with contract, aiding and abetting a breach of fiduciary duty, and unfair competition.

    • Whether to seek expedited discovery prior to a p. i. hearing.
    • Remedies include damages, injunction, and the terms stated in 6.

    Lead Panelists: Gabrielle Levin & John Siegal
    Panelists: Richard B. Friedman; Loren Gesinsky; Robert P. Haney Jr.; Mara B. Levin & Lauri F. Rasnick

    1:40 – 1:45 Issues for Successor Employer

    • Confirm that proper documentation exists that new employees must not use prior employer’s information.
    • Terminate new employee in light of allegations?
    • Indemnify new employee because of allegations?

    Lead Panelist: Lauri F. Rasnick

  • New York: 2.0 skills
    New Jersey: 2.1 general
    California: 1.5 general
    Pennsylvania: 1.5 general
    Connecticut: Available to Licensed Attorneys

    Please Note: Newly admitted NY attorneys cannot fulfill ethics or skills credits through our on-demand programs under OCA rules. For more information on this, please see http://www.nycourts.gov/attorneys/cle/changes_for_2016.shtml.

  • Sponsoring Association Committees:
    Labor & Employment Law, Katherine A. Greenberg
    Trade Secrets, John Siegal
    Council on Intellectual Property, James R. Klaiber

    Sponsorship Opportunities are Available! Please Contact:
    Angie Avila, Manager, Membership Outreach and Sponsorships | (212) 382-6608 | aavila@nycbar.org

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