GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
The third opinion understands trade secret law as an intellectual property right and applies Arti - cle 8 of the Rome II Regulation. Therefore, the trade secret misappropriation would be gov - erned by the law of the country in which the infringement takes place. However, it is unclear whether prior offences (eg, the acquisition of the trade secret) would have to be assessed separately according to their place of action or whether they would also be subject to the law of the country where the subsequent act (the use or disclosure) occurs. It is not yet foreseeable which of these three opinions will ultimately prevail. Before the TSA came into force, most scholars followed the first opinion, differentiating between market-related and bilateral infringements; however, with the introduction of the TSA, the protection of trade secrets has shifted significantly in the direction of intellectual property law. Therefore, a conflict rule designed specifically for the protection of trade secrets would be preferable.
• any other conduct that, under the circum - stances, is considered contrary to honest commercial practices. This covers most activities commonly known as “industrial espionage” and can be conducted by anyone. Secondly, a trade secret shall not be used or disclosed by anyone who: • has acquired the trade secret unlawfully (see above); • is in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or • is in breach of a contractual or any other duty to limit the use of the trade secret. While the first variant seeks to prevent further misappropriation of an already illegally acquired trade secret, the second and third variants are primary acts of infringement, which can only be fulfilled by offenders who gained access to the trade secret lawfully but breach their contractual duties by disclosing or using it (ie, employees and other contractual partners). Thirdly, the acquisition, use or disclosure of a trade secret shall also be considered unlawful whenever a person, at the time of the acquisi - tion, use or disclosure, knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclos - ing the trade secret unlawfully, as previously described. This provision seeks to prevent the “receiving of stolen secrets” . While an infringe - ment of the alternatives above is independent of fault, this variant requires the offender to act with negligence.
2. Misappropriation of Trade Secrets
2.1 The Definition of Misappropriation German trade secret law recognises four types of conduct that support a claim for trade secret misappropriation. The first is the unlawful acquisition of the secret. A trade secret shall not be obtained by: • unauthorised access to, appropriation of, or copying of any documents, objects, materi - als, substances or electronic files, lawfully under the control of the trade secret holder, containing the trade secret or from which the trade secret can be deduced; or
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