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Vermont Bar Association

Seminar Materials

58th

Mid-Year Meeting

IP Law for Cocktail Parties

March 20, 2014

Hilton Burlington, VT

Faculty:

Walter E. Judge, Jr., Esq.

Andrew D. Manitsky, Esq.

Stuart P. Meyer, Esq.

Daniel P. Richardson, Esq.

Gordon E.R. Troy, Esq.

Thomas S. Valente, Esq.

Gregory M. Maguire, Esq.

TRADE SECRETS

“HOT” ISSUES 2015

By: Walter Judge, Downs Rachlin Martin, 2015

1. Can the contacts on a social media account (e.g., LinkedIn) maintained by an employee be the employer’s trade secret?

No. Eagle v. Morgan, United States District Court, E.D. Pa., C.A. No. 2:11-cv-04303 (Dec. 22, 2011). Court dismisses defendant-company’s counterclaim for trade secret misappropriation against plaintiff-founder of company. Founder had developed a LinkedIn profile to promote the company she founded and owned. Company under new ownership alleged that the LinkedIn connections were its trade secrets. Court grants dismissal because LinkedIn connections are either generally known in the business community or easily derived from public information.

Maybe/Yes. Christou, et al. v. Beatport, LLC, et al., United States District Court, Colorado, C.A. No. 10-cv-02912-RBJ-KMT (March 14, 2012). Court denies defendant ex-employee’s motion to dismiss complaint alleging trade secrets misappropriation. Holds that a company’s (plaintiff’s) MySpace profiles and friends list can be the company’s trade secret. Online, the “friends” list of the company’s MySpace profile contains a lot more information than just the “friend’s” name. It gives the owner of the profile the “friend’s” personal information, including interests, preferences, and contact information that can have commercial value. It allows the “friend” to be contacted and advertised to. This information goes beyond what is publically available. Duplicating all the information available from the “friends” list would be time-consuming and costly. The public can see the names of the company’s “friends” online, but the public does not have all the other information that the company gets by virtue of having these “friends.” (Later, the court denied defendant’s summary judgment motion. In July, 2013, there was a jury trial. The jury rendered a verdict for the defendant.)

Maybe/Yes. Cellular Accessories For Less, Inc. v. Trinitas, LLC, United States District Court, C.D. Cal., C.A. No. 2:12-cv-06736 DDP (Sept. 16, 2014). Court denies defendant ex-employee’s motion for summary judgment, holding that LinkedIn contacts that the defendant developed while working for plaintiff (defendant’s former employer) could be a trade secret. Plaintiff encouraged defendant to develop LinkedIn contacts during the employment. Defendant’s LinkedIn contacts may, or may not, have been viewable by other LinkedIn users – defendant’s motion papers do not say whether the contacts were publically viewable. (The case later settled.)

IP Law for Cocktail Parties

VBA Presentation March 20, 2015

Walter Judge, Downs Rachlin Martin wjudge@drm.com

Greg Maguire, Revision Military

gmaguire@revisionmilitary.com

Andrew Manitsky, Gravel & Shea

amanitsky@gravelshea.com

Stuart Meyer, Fenwick & West

smeyer@fenwick.com

Dan Richardson, Tarrant, Gilles & Richardson

drichardson@tgrvt.com

Gordon Troy, Gordon E. R. Troy, PC

gtroy@webtm.com

Tom Valente, Ryan Smith & Carbine

tsv@rsclaw.com

Revision Military/ Essex Jct. and Newport, VT

Revision designs, develops and manufactures soldier systems solutions for military and tactical clients worldwide.

Revision products deliver the highest standards of ballistic protection, optical clarity, durability, equipment compatibility, comfort and overall value.

Sawfly – Our Oldest and Most Successful Goggle

• 2055 Design patented and trademarked in US & EU

• 2009 fakes started to sell on the internet

• By 2011, we were experience 30-40 cases a year

• 2011 trademarked in China

• Take Downs, and Cease and Desist, 90% effective

• 2012 Tracked source to China

• 2014 – explosive grow in volume of fakes – Alibaba

The Challenge – Product Forgery

• E-commerce Foreign law partners – effective regarding sales

• IP filed in China

• US Customs – 4 seizures

• E-commerce content take downs

Enforcement

IP Law for Cocktail Parties

VBA Presentation March 20, 2015

Walter Judge, Downs Rachlin Martin wjudge@drm.com

Greg Maguire, Revision Military

gmaguire@revisionmilitary.com

Andrew Manitsky, Gravel & Shea

amanitsky@gravelshea.com

Stuart Meyer, Fenwick & West

smeyer@fenwick.com

Dan Richardson, Tarrant, Gilles & Richardson

drichardson@tgrvt.com

Gordon Troy, WebTM

gtroy@webtm.com

Tom Valente, Ryan Smith & Carbine

tsv@rsclaw.com