USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Brandon R. Weber and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
1.13 Other Legal Theories In addition to federal or state trade secret claims, plaintiffs should consider whether other com - mon law or statutory claims may apply to the conduct at issue, including, for example, breach of contract, tortious interference with contractual relations, unfair competition, breach of fiduciary duty, aiding and abetting a breach of fiduciary duty or unjust enrichment. That said, the Uniform Trade Secret Act and many state trade secret laws pre-empt com - mon law and statutory claims to the extent they are based on the same facts and/or underlying conduct as the trade secret claims (see UTSA Section 7). 1.14 Criminal Liability Responsibility for enforcing criminal laws direct - ed to trade secret theft and related activity rests with prosecutors at both the federal and state levels. While trade secret owners cannot pursue criminal claims as of right, they should consid - er whether to refer suspected or known trade secret theft to the Department of Justice or a state agency for investigation. The Economic Espionage Act (EEA) imposes criminal liability, including substantial fines and imprisonment, for intentional or knowing theft of trade secrets. As with many federal criminal statutes, attempts to commit trade secret misappropriation as well as conspiring with others in furtherance of steal - ing trade secrets are themselves criminal activi - ties, even if the theft is not ultimately successful. Fines for organisations that commit an offence under the EEA can reach up to three times the value of the stolen trade secrets to the organisa - tion, including avoided R&D expenses. Defendants may avail themselves of defences unique to trade secret law. For example, the DTSA includes a “ whistle-blower immunity ” pro -
vision that shields a person from criminal liability under trade secret laws for disclosing a trade secret in confidence to a government official or an attorney solely for the purpose of reporting or investigating a suspected violation of law. Separately, the CFAA establishes criminal penal - ties for knowingly or intentionally either access - ing a protected computer (without authorisation) or exceeding an authorised level of access. Pen - alties include fines and imprisonment, the sever - ity of which may be enhanced if the offence is committed for commercial advantage or finan - cial gain. 1.15 Extraterritoriality The DTSA appears to carry over the EEA’s appli - cabilityto conduct outside the USA under certain circumstances. The simplest hook for extrater - ritorial application is if the misappropriator is a person who is a citizen or lawful permanent resident of the USA or an organisation that is organised under the laws of the USA or one of its states. The DTSA may also have extraterritorial reach even if the misappropriator does not meet either criterion, as long as an act in furtherance of the offence was committed in the USA. Courts are just beginning to grapple with the contours of extraterritorial application of the DTSA, so the precise parameters are not entirely clear. So far, they have been willing to apply the DTSA to misappropriation occurring overseas based on “ acts in furtherance ” that occurred in the USA, including the marketing of products embodying the stolen trade secrets at trade shows within the USA and travel to the USA for the purpose of hiring a competitor’s engineers. See Motorola Solutions Inc v Hytera Communications Corp, 436 F Supp 3d 1150, 1157–66 (N.D. Ill. 2020); Micron Technology Inc v United Microelectron -
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