JAPAN Law and Practice Contributed by: Miki Goto, Ryo Murakami and Akihito Ishii, Anderson Mori & Tomotsune
In a case involving bidding information obtained unlawfully, the court has found that such infor - mation does not deserve protection as a trade secret because the use of such information is adverse to the public interests. 1.4 Elements of Trade Secret Protection To seek injunctive relief under the UCPA Article 3.1 against misappropriation of trade secrets, it is generally required that: • the information satisfies the elements of a trade secret (as provided in 1.2 What Is Pro- tectable as a Trade Secret ); and • there is an act of misappropriation (as provid - ed in 2.1 The Definition of Misappropriation ). To seek damage compensation under the UCPA Article 4, the following is additionally required: • that there was intention or negligence of the misappropriating party; • that its business interests were harmed by the misappropriation; and • the amount of damage suffered by the owner. If the owner seeks damages based on the gen - eral rule of tort, the elements will be similar to where it seeks damages based on UCPA Article 4, except that the subject information will not be strictly required to fulfil all of the elements of a trade secret, and the harmed interest of the owner shall not be limited to business interests. If the owner seeks injunctive relief or damages based on breach of contract, the showing that the treatment of the relevant information by the actor violates the contractual obligation it owes to the owner shall be generally required. If the owner seeks recovery of unjust enrichment by the infringer, the owner must establish that:
• the misappropriating party has gained without legal basis; • the owner has suffered loss; and • there is causation between such gain and loss. 1.5 Reasonable Measures The owner of a trade secret must show that it has taken reasonable measures to keep the information under management a secret in order to enjoy trade secret protection, due to the man - agement requirement explained in 1.2 What is Protectable as a Trade Secret . The reasonable - ness of the measure shall be determined taking into consideration the specific circumstances, including whether taking such measures are commercially reasonable, the scale of the owner, or the nature of business and the information. In general, courts tend to find that reasonable measures have been taken where the information is clearly marked as confidential, and access to the information was limited to specific employ - ees and required entering of passwords or was physically locked. In contrast, it is often found that reasonable measures were not taken in situ- ations where the information lacked clear mark - ings, free and unrestricted access was allowed to all employees, the protective measures such as passwords or locks were substantially mean - ingless in practice, or if the information could physically be taken out of its place of storage. 1.6 Disclosure to Employees Disclosure of a trade secret to an employee will not necessarily disqualify the information from receiving protection as a trade secret, as employees are generally regarded to be under the control of the employer, and thus disclosure will not compromise the secrecy of the informa - tion. However, as explained in 1.5 Reasonable Measures , there must be reasonable protective
160 CHAMBERS.COM
Powered by FlippingBook