(Webcast) New York and California Trade Secrets Litigations: Differences and Best Practices

Monday, May 9, 2022 | 12:00 pm – 1:45 pm

• Description
• Faculty
• Agenda
• CLE Credit
• Sponsors

• This program which is being presented by leading trade secrets litigators in New York and California is perfect for in-house and outside counsel involved in trade secrets-related litigation in federal and state courts in both states.

  Topics to be addressed include:

  • The attempted use of trade secrets allegations in California litigation to circumvent the statutory prohibition on non-compete provisions;
  • The varying common law liability theories which have been successfully employed in each state;
  • The applicable California statutory provisions;
  • The varying damages theories which have been successfully employed in each state;
  • The way courts in each state have applied the Defend Trade Secrets Act of 2016;
  • Whether plaintiffs or defendants tend to fare better in one state or the other;
  • Drafting suggestions that apply in both states;
  • Differing pre-litigation due diligence requirements in each state;
  • When and who should conduct forensic analyses; and
  • Best litigation practices in each state.

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

• David C. Bohrer
  Greenfield LLP

  Taleah E. Jennings
  Schulte Roth & Zabel LLP

  Bambo Obaro
  Weil, Gotshal & Manges LLP

  Ilissa Samplin
  Gibson Dunn & Crutcher LLP

  Peter L. Simmons  
  Fried, Frank, Harris, Shriver & Jacobson LLP

  Abraham Y. (Avi) Skoff  
  Moses & Singer LLP

• 12:00 pm – 12:05 pm 
  Introduction & Program Overview
  Richard B. Friedman                                              

   

  12:05 pm – 12:15 pm
  Introduction to Trade Secrets

  • • • New York Common law definition – Valuable, proprietary information or
        “know-how” that a business protects by taking reasonable efforts to
        maintain its secrecy:
        • Distinction between trade secrets and confidential information.
      • Variations on the definition:
        • UTSA in 49 states, including California.
      •     DTSA, effective in 2016, created a private cause of action.

   Panelists

   

  12:15 pm – 12:55 pm
  Liability Issues                                                            

  • • • Statutory law in California:
        • Statutory requirement in California’s Trade Secrets Act to identify trade secrets with particularity; and
        • Business and Professions Section 16600 and Labor Code 925.
      • Inevitable disclosure doctrine: Not valid in California.
        • Doctrine used in New York to justify enforcement of existing noncompetition or nonsolicitation provisions and in cases of actual misappropriation; not used as a substitute for noncompete or nonsolicitation agreements or to expand existing confidentiality provisions.
      •   Viability of employee choice/forfeiture for competition doctrine in New York  pursuant to which courts will not consider the reasonableness of therestrictions if the employee had a choice to get post-employment compensation or compete:
      • • Not available in California.
      •     Faithless servant doctrine is available in New York and not in California.
      •   “Mere confidentiality” non-contract claims are viable in New York but not in California.
      •   Respondent superior liability in California but not applied in New York.
      • Preemption Doctrine in California but not in New York.

   

  12:55 pm – 1:20 pm
  Remedies

  • • • What are the available damages?  Plaintiff’s Loss; Possible clawback of
        compensation or invalidation of equity; Defendant’s Gains (difficult to
        obtain); Possible fee shifting.
      • Certain types of unjust enrichment claims are not recoverable under New
        York law:
        • Per J. Brooks Co. v. Cambridge Security Seals, 858 F.3d744 (2d Cir. 2017, a plaintiff asserting claims of misappropriation of a trade secret, unfair competition, and unjust enrichment cannot recover damages that are measured by the costs the defendant avoided due to its unlawful activity unless it is a proxy for the plaintiff’s losses.
      • Reasonable royalty in California.  How about New York?
        • No right to jury trial in California on reasonable royalty theories; No such limitation in New York.
      •           Punitive damages:
        • New York courts will not initiate unjust enrichment damages in calculating punitive damages.
      •    Choice of law provision is not enforceable in California unless employee was
        advised by counsel:
        • Possible use of New York courts to circumvent California law.

   Panelists

   

  1:20 pm – 1:40 pm
  Pre-Litigation Best Practices

  • • • Steps companies should take to position for enforcement:
        • Need to define trade secrets and communicate restrictions to employees with access; and
      • • Need to take proactive measures to protect trade secrets.
      • Need to do suitable pre-litigation due diligence in California because of the
        statutory need to identify trade secrets with particularity.
      • When to conduct forensic analysis and by whom:
      • Internally or by a third party?
      • Litigation Strategy:
        • Often commenced by Order To Show Cause, requests for expedited discovery, and TRO Decision on a preliminary injunction motion often resolves the case; and
      • • Interplay between Order to Show Cause and Damages. One does not preclude the other.

  Panelists

   

  1:40 pm – 1:45 pm
  Question/Answer Session

• New York: 2.0 Total, 1.0 Professional Practice & 1.0 Skills
  New Jersey: 2.1 General
  California: 2.0 Total, 1.0 Professional Practice & 1.0 Skills
  Pennsylvania: 1.5 General
  Connecticut: Available to Licensed Attorneys

• Sponsoring Association Committee:
  Trade Secrets, John Siegal, Chair
  

  Sponsorship Opportunities are Available! Please Contact:
  Yelena Balashchenko, Manager, Business Development & Sponsorships | (212) 382-6608 | ybalashchenko@nycbar.org