USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Brandon R. Weber and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
of misappropriation, preferring a policy of free employee mobility at the early stage of any liti - gation (eg, Janus et Cie, v Kahnke, No 12 Civ. 7201 WHP, 2013 WL 5405543, at *2 (S.D.N.Y. Aug. 29, 2013)). These same courts nevertheless often entertain a cause of action for trade secret misappropriation – and even grant permanent injunctions – on a fully developed factual record proving elements of the claim. 4.2 New Employees When hiring a new employee, there are a number of steps that an employer can take to minimise the risk of a trade secret claim, including the fol - lowing: • performing an analysis of the risk of litigation before hiring the employee; • ensuring that the employee is not placed in a posi- tion where they will inevitably rely on and use a former employer’s trade secrets; • requiring the new employee to sign a non-disclosure agreement and explaining the trade secret confiden - tiality policy; • reminding the employee not to disclose any trade secrets or confidential information from prior posi - tions; • training the employee on trade secret policies; • requiring a new employee to sign a contract prevent - ing them from disclosing trade secrets and/or confi - dential information from a previous employer; and • assessing whether the new employee is subject to a non-compete agreement. 5. Trade Secret Litigation 5.1 Prerequisites to Filing a Lawsuit There are no procedural prerequisites or require - ments for filing a trade secret misappropriation lawsuit, although a lawsuit may be preceded by a cease-and-desist letter or a period of prior
disclose confidential information or company trade secrets and that they have searched for, located and returned or destroyed all company property; and • asking the employee if they have any questions regarding the confidentiality of any trade secrets. 4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise An employee’s general knowledge and skills, including those already possessed or learned from a prior job, do not count as trade secrets that the employee is prohibited from using at a subsequent position. When an individual accepts new employment with a competing entity, however, the employee needs to ensure that they only rely on such general knowledge and skill, and do not disclose any trade secrets or confidential information to the new employer. In some situations, it may be difficult to separate the trade secrets from an employee’s general skills, experience and knowledge. To account for those instances, the common law developed an “ inevitable disclosure ” doctrine (see Pepsi - Co, Inc v Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995)), which recognises that there may be sce - narios where the duties of the employee’s new position inevitably require the disclosure of the trade secret from the employee’s former employ - ment. In such a situation, the previous employer may seek an injunction to prevent the employee from working with a subsequent employer at all (or in a directly competitive role) for a specified time (eg, one year). However, even if such a risk of inevitable dis - closure exists, many courts will deny injunctive relief on this basis alone, absent actual proof
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