Trade Secrets

reviewed by Miriam Beezy

Trade secrets?whether they are valued customer lists, business plans, unique processes, or complex technologies?can be the backbone of a corporate enterprise. And the complexities of the laws governing such important intellectual property can create a minefield of potentially injurious issues for a company.

Trade Secrets: Law and Practice by seasoned litigators David Quinto and Stuart Singer will be an important addition to the libraries of nonspecialist practitioners who handle trade-secret misappropriation claims and provide counseling as part of their practices. The book also can be helpful for in-house counsel looking for practical tips on strengthening IP policies and adopting prophylactic measures against trade-secret misappropriation, as well as for managing such claims. This concise guide is loaded with clear explanations of basic and critical issues, helpful practice tips, strategic considerations, charts, case law summaries, and even sample forms and letters. The book is handy for quick reference in the office or even while traveling (I read it on a trip to China). Additionally, its in-depth table of contents and an appendix with state law summaries are helpful guideposts to specific issues.

Quinto and Singer masterfully explain the threshold issue of what is protectable as a trade secret?a question mixing both law and fact?starting with the sweeping scope of the Uniform Trade Secrets Act (UTSA) drafted in 1979, amended in 1985, and adopted by most American jurisdictions, including California. (See Cal. Civ. Code, §§ 3426?3426.11.) The authors offer practical scenarios and assessments of successful strategies as they explain the requirements of the important concepts in the UTSA, such as "information," "independent economic value," "not generally known," and "reasonable efforts to maintain secrecy." They confidently explore the permutations of various state laws. And in lengthy footnotes, they reference the various statutes and seminal cases in the common law states.

Separate chapters devoted to litigating trade-secret actions from both the plaintiff's and the defendant's perspectives are one of the book's highlights. The explorations of alternative state and federal claims and the sensitivities of the requirement to identify trade secrets with "reasonable particularity" are also quite enlightening. In addition, the authors' concrete considerations regarding preliminary injunctive relief and a state's application of the "inevitable disclosure" doctrine, which has been rejected in California, are very informative, as are their pointers on choosing experts and discovery tactics.

Quinto and Singer unravel tangled procedural issues and provide an indispensable discussion of preemption of state claims. They also offer a general review of defenses, and explain specific ones, such as the statute of limitations, reverse engineering, ready ascertainability, and public knowledge.

The book includes chapters on corporate trade-secret protection plans and practices, as well as on hiring and terminating employees. The checklists featured here are alone worth the price of the book, spotlighting procedures for avoiding breaches in trade-secret status and for protecting a company from liability. For in-house counsel, there's a valuable discussion of the interaction of corporate policies and actions, and of the effect of the Sarbanes-Oxley Act on potential disclosure of trade secrets.

However, Trade Secrets does lack an avenue for supplementation or updating. So the reader will need to do the necessary Shephardizing or supplemental research before relying on cases or statutes for support. That aside, Trade Secrets provides a valuable examination of the critical issues and practical strategies in the vast and multifaceted area of trade-secret law.

Miriam Claire Beezy is a partner with Foley & Lardner in Los Angeles and a member and former chair of the firm's trademark, copyright and advertising practice group.

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