IP Law Blog

By James Kachmar

On March 5, 2008, the United States District Court for the Northern District of California (“District Court”) in First Advantage Background Services Corp. v. PrivateEyes, Inc., (“First Advantage”) found, inter alia, that the California Uniform Trade Secrets Act, California Civil Code section 3426, et seq. (“CUTSA”) preempts common law claims for intentional interference that are based on wrongful acts amounting to misappropriation of trade secrets. The First Advantage opinion holds that claims for intentional interference that are based on wrongful acts amounting to misappropriation of trade secrets may be preempted by CUTSA.

By Dale Campbell

Can a company go too far in preventing its employees from being hired away by its customers? The Fourth District Court of Appeal recently answered, “yes,” but gave some indication where the line of permissible restrictions is crossed. (VL Systems, Inc. v. Unisen, Inc. (June 2007) 152 Cal.App.4th 708.)

By James Kachmar

Businesses, especially consultants, frequently include a no-hire provision in connection with service or consulting agreements. These provisions are usually intended to prevent the client from soliciting or hiring away the consulting company’s employees. No-hire provisions have two primary goals:  First, to protect the employees of one business from being recruited away by the companies they provided services to. The second goal is to help retain customers, i.e., if the client business is able to recruit a consulting business’s employees, there would be no further need for the consulting company’s services.

 On June 25, 2007, the Court of Appeals for the Fourth Appellate District struck down a “no- hire” provision in VL Systems, Inc. v. Unisen, Inc. (Case No. G037334). Though the VL Systems Court emphasized that there were limitations on the extent of its holding, companies that rely on “no-hire” provisions, and the attorneys who advise them, should take heed of some of the concerns raised by the VL Systems Court.

By Andrea Anapolsky

The state of California is considered an at-will employment state, where both the employee and the employer may freely walk away from the employment contract at any time with little to no consequences.   This freedom, while intended to benefit both the employer and the employee, has enabled several employers to hire away their competitor’s employees. Last month the Ninth Circuit identified significant nuances concerning the issue of whether, under California law, a corporation’s allegations that its competitor lured away employees who signed term-based employment contracts, sufficiently plead intentional interference with contract, interference with prospective economic advantage and violation of the California Business and Professions Code section 17200 et seq., also known as the Unfair Competition Law (“UCL”). 

By Andrea Anapolksy

          In the wake of jury selection for the Coco-Cola Co. theft trade secrets trial and Apple Computer’s two-year quest to discover who leaked trade secret information about an unreleased Apple product to several online blog sites, misappropriation of a company’s trade secrets may have become increasingly more difficult to prevent. This article will be the first of  a two-part series which examines the trade secrets doctrine and recent developments related to it.  This article in particular will assess the doctrine of trade secrets under California law and will offer available remedies on avoiding misappropriation.  

By Audrey A. Millemann

            A business's intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business. This article summarizes the types of intellectual property protection that are available.

By, Pam Bertani & April Gatling

Recent controversial media attention regarding the alleged misrepresentation and conveyance of pharmaceutical clinical trial results has spawned action in Congress. Currently pending federal legislation could, if enacted, require publicly accessible, detailed disclosure of clinical trial test results for pharmaceutical and biological products. Such a disclosure requirement will undoubtedly have a significant industry and consumer protection impact on the continued development and sale of pharmaceutical products in the United States.

By Todd Wilson

Many growing businesses face the problem of having ideas that will give them a leg up on the competition or new products that will revolutionize their industries but lack the financial or intellectual resources to, without the assistance of partners, bring those ideas to fruition or to bring the products to market. Even more established businesses often find it necessary to supplement their own internal resources with ideas and products from other businesses. These are situations in which confidentiality agreements become an important means of intellectual property protection for such businesses.

By R. Todd Wilson

All businesses have trade secrets. Stated slightly differently, every business has information that it would rather keep confidential. A trade secret can be any useful information that is not generally known. Trade secrets encompass both technical information such as formulas, designs, tools, manufacturing processes, and computer source code as well as business secrets including customer lists, employee lists, financial and accounting data, product plans and marketing plans. Such "confidential" or "proprietary" information is usually essential to the success of the business. Often, however, companies do little or nothing to protect that knowledge.