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In The Winery
B’s having invested over seven years and that it was trial of the case on the merits, the Court enjoined
not shown to be in widespread usage and was not O’Rourke from working at Bagel Boys based on the
readily ascertainable by others. Iowa Trade Secrets Act.
Uncle B’s also had to show that it took reasonable The first step in a good trade secrets protection
measures to protect the trade secrets. But, Uncle program is to figure out all of the trade secrets the
B’s could not produce O’Rourke’s signed employ- company has. These may include wine club mem-
ee version NDA or the noncompete agreement. ber lists, vendor lists, customer lists, winemaking
Strangely, O’Rourke’s NDA and noncompete could recipes and processes, grape growing processes,
not be found at the time of the lawsuit. Fortunately, and many other things. The simplest steps to protect
both William Rose, Jr. and Sr. said that they saw these trade secrets are to limit access to only those
O’Rourke sign the agreements, and Uncle B’s pro- who need to know the secrets, such as by using
duced evidence that at least 148 out of 149 other passwords on computer files and/or computers,
employees had signed the NDA and noncompete. having employees sign NDAs, locking doors and
Uncle B’s also produced evidence that O’Rourke file cabinets, and giving your attorney a copy of all
had opportunities for unsupervised access to the HR NDAs and noncompetes upon execution. Ask your-
office and files. self: what information does your company have,
that if it fell into a competitor’s hands, would be a
A noncompete can be unenforceable against a problem for you? Then make sure you take enough
former employee. But, Court’s do not like to limit steps to protect it.
someone’s right to earn a living. For example, in
California, noncompetes are normally not enforce- Turning New Ideas, Names,
able against a former employee. While Uncle B’s Products & Computer Programs
did fail to secure its important HR documents Into Powerful Intellectual Property
against unauthorized access, there is little doubt
that Uncle B’s took several steps to protect its trade David Hoffman has been an attorney practicing exclu-
secrets. In addition, the Court appeared to have a sively in intellectual property law (patents, trademarks,
healthy skepticism regarding O’Rourke’s claim that copyrights and unfair competition) since 1985. Mr.
he never saw or signed the NDA and noncompete. Hoffman represents multinational companies as well as
numerous start up to medium size
What does it take to prove you have a trade secret? businesses. He both litigates and
Under Iowa trade secret law and the uniform trade procures rights for his clients, and
secrets act, generally the following: with his philosophy of procur-
ing the broadest rights possible,
A process, invention or other information that has performing good clearance pro-
economic value; cedures, and negotiating, has suc-
cessfully avoided and minimized
The information is “secret,” i.e., not generally litigation for clients he counsels.
known in the industry and is not readily ascertain-
able by others; and Mr. Hoffman has taught for
a patent bar review class, has
The owner of the secret takes reasonable steps to authored articles and given
maintain its secrecy. lectures on intellectual property, and has been named
to Who’s Who Millennium Edition and Who’s Who
Many owners slip up on the last requirement. They Among Rising Young Americans in American Society &
fail to take steps to protect the secret. Here, Uncle
B’s made every plant visitor and every employee For More Info...
sign an NDA, among other steps. So, even without
a signed NDA and noncompete, and even before 661.775.0300
www.dlhpatent.com
877-892-5332 The Grapevine • July - August 2015 Page 5
