Bankers Beware—Trade Secret Misappropriation Can Lead to Lifetime Ban

Employees change jobs all the time. There is generally nothing wrong with an employee planning his or her next move while still employed. But when an employee’s plans include gathering up his or her employer’s trade secrets to use at a new place of employment, that calculus changes.

Brian Esler discusses the Federal Reserve’s recent action against two bank employees accused of trade secret misappropriation on our blog, Bank Law Monitor. Read it here.

Washington Likely Adopting New Privacy Law in the Likeness of the European Union’s General Data Protection Regulation

Another state may join the movement towards adopting General Data Protection Regulation (GDPR)-like privacy protections. A new privacy bill was introduced in the Washington Legislature on January 17, 2019, called the Washington Privacy Act (SB 5376). The Act would give consumers rights that are similar to those under the GDPR, such as the right to access their data, to update and correct their data, to port their data, to request deletion of their data under some circumstances, to restrict processing, and to object to certain processing, including for direct marketing.

Some of the Act’s text is taken verbatim from the GDPR, including parts of the definitions of consent and processing, and the Act adopts GDPR terms such as “controller” and “processor.” As with the GDPR, the Act would require processors to comply with controller processing instructions, which must be incorporated into the parties’ contracts.

The Act would apply to companies that control or process the data of over 100,000 Washington residents or which control or process data of 25,000 Washington residents and also obtain over 50% of their gross revenue from the sale of personal information. There are also additional privacy notice disclosure requirements and special provisions and limitations for facial recognition technology. There would be no private right of action—enforcement would be through the Washington Attorney General.

This bill appears to have support of important members of the tech community and may move quickly. The bill text is available here.

Why Every European Union Brand Owner Should Supersize Their Brand Documentation Efforts Following the EUIPO’s Cancellation of McDonald’s BIG MAC Registration

On January 11, 2019, the European Union Intellectual Property Office (EUIPO) cancelled McDonald’s International Property Company, Ltd.’s European Union registration for BIG MAC, at the request of Supermac’s (Holdings) Ltd. The Cancellation was initiated as part of an ongoing dispute between McDonald’s and Supermac’s over use of the term MAC, and the initiation of the Cancellation came as no surprise. The decision, however, should surprise and concern brand owners throughout the EU.

At its core, the EUIPO’s decision indicates that brand owners have a new, very stringent standard to prove use of a registered mark in the EU. If the BIG MAC decision is correct in its application of EUIPO evidentiary standards, brand owners must (a) provide third-party examples of how its own brand has been used with its goods/services in the EU, (b) have a third-party provide very specific data concerning its sales, and (c) demonstrate beyond a shadow of a doubt that the examples of use and data provided are directly linked to how EU consumers experienced the mark in connection with tangible sales throughout the EU and not in a few select member countries. Sound confusing and unreasonable? I agree. Continue Reading

“Secret Sales” of an Invention Continue to Be a Potential Bar to Patent Rights, Even After the America Invents Act

On January 22, 2019, the United States Supreme Court decided an important question in patent law: After the America Invents Act (AIA), does the sale of an invention to a third party, who is contractually obligated to keep the invention confidential, make the invention “on sale” within the meaning of the patent statutes?

The unanimous opinion holds that the AIA did not change the previous rule that such “secret sales” of inventions implicate the on-sale bar for patent rights, even though the details of the invention itself were not made public by the sale.

Specifically, the post-AIA version of the patent statutes prevents a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U. S. C. §102(a)(1). The “on sale” part of this language is known as the on-sale bar, and the categories of disclosures listed in §102(a) are known as prior art. The patent statutes in effect before the AIA had similar provisions. Continue Reading

Supreme Court to Take Up Protection of Confidential Information Provided to the Government: Food Marketing Institute v. Argus Leader Media

On January 11, the United States Supreme Court announced it accepted the Food Marketing Institute’s cert petition to review the Eighth Circuit’s decision in Food Marketing Institute v. Argus Leader Media. This represents the latest development toward resolving a conundrum we have described here before (October 2018/June 2018)—how to protect confidential and trade secret information provided to the government in light of public disclosure laws.

The Freedom of Information Act’s (FOIA) Exemption 4 exempts “trade secrets and commercial or financial information obtained from a person and privileged or confidential” from disclosure in response to a FOIA request. 5 U.S.C. § 552(b)(4). In Food Marketing Institute, the Eighth Circuit considered whether the U.S. Department of Agriculture (USDA) could withhold information provided to the USDA regarding recipients of aid under the Supplemental Nutrition Assistance Program (SNAP). The USDA argued that the data was within Exemption 4 because releasing that data was likely to cause substantial harm to the competitive position of SNAP retailers. After a bench trial, the District Court held that the USDA had not proved a likelihood of substantial competitive injury, and Food Marketing Institute (representing the interests of those who provided that data) intervened and appealed to the Eighth Circuit. In a six page opinion, the Eighth Circuit affirmed, finding that while the USDA showed that the information was commercially useful and the release of the information might cause some competitive harm, it would not cause “substantial” competitive harm. Continue Reading