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Jan-Diederik Lindemans is a partner in Crowell & Moring's Brussels office. His practice focuses on intellectual property, trade secrets, and entertainment law. Although Jan-Diederik assists a wide variety of clients in predominantly contentious matters, the core of his clients range from the chemical, pharmaceutical, and biotechnological sectors to the advertising, media, entertainment, and fashion industries.

Fig cookiesThe Criminal Court of Mechelen (Belgium) ruled in favor of Bofin Biscuits against a former production assistant accused of having stolen the assistant director of the cookie baker’s laptop. The laptop allegedly contained the secret recipes of all the cookies produced by Bofin Biscuits. This case is interesting because of the nature of the secrets and also when compared to that of the “fig spread”-case discussed here two weeks ago. It also confirms that trade secret misappropriation cases do not necessary only involve complex matters on state of the art technology owned by large multinationals.

The facts of the case are rather straight-forward. On November 12, 2013 the assistant-director of Bofin Biscuits noticed that his laptop had gone missing during his absence from November 6 to November 11. Images from the surveillance video system of Bofin Biscuits showed that the actual taking of the laptop had not been filmed. The camera hanging outside the assistant-director’s office did show a production assistant walking down the hallway where the office was located, entering it and leaving with something clearly hidden under his coat. During the trial the production-assistant did not contradict that he was the person that had been filmed, but he denied that he had taken the laptop. When asked what he then was hiding under his coat, he claimed not to recall anything.

For the public prosecutor this was a clear cut case and he requested the court to sentence the former production assistant to a six month effective prison sentence and a 4.800 EUR fine. Bofin Biscuits, who had joined the proceedings by suing its now ex-employee for civil injury, requested 1.500 EUR for the still missing laptop, 2.500 EUR for the time spent on recovering the information stored on the laptop, 500 EUR moral damages and a provisional damages amount of 25.000 EUR for having stolen the secret cookie recipes.

Continue Reading Employee Who Stole the Cookie Recipe From the Cookie Jar Fined €1 (Yes, that’s one single Euro)

1.  Clearly label Christmas cards as “Confidential” if these contain secret wishes.

2.  Amend Confidentiality Agreements and Employee Manual to include the required Whistleblower language – those elves have rights.

3.  Have robust exit interviews with all departing elves, reminding them of their obligations to keep “reindeer games” secret.

4.  Insist that expert toy makers are warned not to reveal secret information while enjoying (too much) mulled wine with ‘Happy Holidays’-industry peers.

5.  Further restrict access to the Sleigh Packing Room with candy cane key fobs.

Continue Reading DTSA UPDATE: Tips for Santa to Maintain Trade Secrets at the North Pole

Today, the European Parliament approved a Directive that seeks to simplify and harmonize the law on trade secrets throughout the European Union with a vast majority (503 in favor, 131 against and 18 abstentions). The Directive was first proposed in 2013. Although the initial proposal was deliberately kept ‘low profile,’ it was the subject of heated debates up until today’s vote. Certain members of parliament indeed invoked the ‘Panama Papers’ and requested that the vote be suspended until the European Commission would have prepared its proposal specifically dealing with whistleblowers. The vote now goes to the EU Council. As this typically is but a formality, it is likely that the Council will approve the Directive as it reads today. If it does, EU member states will have roughly two years to replace their current patchwork of trade secret law and implement the Directive into national law.

The Directive’s stated intent is to “enhance the competitiveness of European businesses and research bodies” and to “improve the conditions/framework for the development and exploitation of innovation and for knowledge transfer” within the EU. Continue Reading European Parliament Votes for Simple Cross-Border Trade Secret Law

Santa’s 10 considerations for maintaining trade secrets at the North Pole:

  1. Restrict access to facility by choosing remote location.
  2. Make the Elves sign Confidentiality Agreements as part of the hiring process.
  3. Have robust exit interviews with all departing elves, reminding them of their obligations to keep “reindeer games” secrets.
  4. Insist that gift wrapping specialists with prior experience at competitors like the Three Kings or Saint-Nicholas are properly screened/briefed.
  5. Further restrict access to gift development/storage facilities with candy cane key fobs.
  6. Share secret reindeer feed formula on a “need to know” basis.
  7. Social media policy (what elves shouldn’t discuss/photograph), if only not to spoil the surprise.
  8. No single elf should know the entire process for packing the sled — divide this information into describe segments and share each among many elves.
  9. Never disclose your secret for still fitting down chimneys despite eating millions of cookies on one night.
  10. Good intentions for the new year are fine, but put them on paper.

Note that this reflects good practices, but each situation and company is different and this is not intended to provide legal advice to any particular situation.

On December 7, 2015, Mercedes’ suit against Benjamin Hoyle, one of its former engineers who allegedly breached his employment contract and misappropriated confidential, trade secret information, was made public. Since 2012, Hoyle had been a member of Mercedes’ Performance Engineering Department working on the Mercedes’ High Performance Powertrain (HPP) Limited Formula One (F1) racing engines. Last year, Hoyle informed Mercedes that he would not be renewing his contract set to expire at the end of 2015, and was planning on joining Ferrari.

Continue Reading Vroom vroom! Mercedes v Ferrari-bound Engineer

The International Association for the Protection of Intellectual Property (AIPPI) recently published the four resolutions that were adopted at its World IP Congress in Rio de Janeiro last month. These resolutions are based on the feedback received throughout 2015 from the national AIPPI-groups around the globe and on the panel discussion at the congress. Hereunder we briefly discuss the resolution on “Question Q247 Trade secrets: overlap with restraint of trade, aspects of enforcement”, which addresses four aspects of trade secret law.

  1. Should trade secret law be curtailed so as to prevent that it becomes an unlawful restraint of trade?

AIPPI finds that many jurisdictions define trade secrets sufficiently narrow so as to avoid free trade- and antitrust issues. AIPPI resolves that although as a general rule trade secret misappropriation should be enjoined, any person should nonetheless be free to make fair use of the general knowledge, skills and experience the acquired while performing their profession.

Continue Reading AIPPI Publishes Rio-Resolution and Country Reports on Specific Aspects of Trade Secrets Enforcement

On October 4, 2015 the trade ministers of Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam announced that they concluded the Trans-Pacific Partnership (TPP). After more than five years of intensive negotiations, these countries representing a combined market of nearly 800 million people agreed to provide, among other things, enhanced protection for trade secrets, as well as efficient enforcement systems for commercial-scale trademark counterfeiting, copyright infringement, or related piracy.

Continue Reading Reports on the TPP Agreement Suggest Focus on Criminal Law to Strengthen Trade Secret Protection

[via Flickr user Craig Sunter]
[via Flickr user Craig Sunter]
On June 16, 2015 the report on the draft Trade Secrets Directive by rapporteur Constance Le Grip, was adopted by the vast majority of the members of the European Parliament’s Legal Affairs Committee (19 in favor, 2 against and 3 abstentions). Informal talks will now start with the European Council in view of reaching a first-reading agreement.

In a previous post we reviewed some of the arguments that have been used by the lobby against the Trade Secrets Directive. One of the more popular arguments, is that these rules would excessively limit the fundamental right of freedom of speech. For instance, opponents argue that the proposed rules would allow owners of trade secrets to prosecute journalists or whistle-blowers if confidential business information became public. Not surprisingly, this concern was raised with the Legal Affairs Committee.

Continue Reading EU Trade Secrets Directive Debate Shouldn’t Focus on Free Speech

The European lawmaker’s work on the draft Trade Secrets Directive, intended to create a uniform legal basis for the protection of trade secrets in the European Union, has entered the finishing straight. The proposal has been and still is subject to much debate at the highest policy and lawmaking level. There are indeed still quite some obstacles to overcome before the Trade Secrets Directive can become a reality rather than merely a draft. In this contribution I will discuss some of the frequently heard arguments for not going through with this project. In my opinion these arguments do not hold good and should not convince the members of the European Parliament to vote against the draft Trade Secrets Directive.

EU
[via Flickr user Thijs ter Haar]

In the past many authors/speakers, including yours truly, have identified several issues and weaknesses in the initial text proposed by the European Commission and even in the text that was proposed by the European Council (despite significant improvements). My criticism has predominantly focused on the shortcomings of the draft Trade Secrets Directive in relation to enforcing the rights granted by the directive. For example: 

  • The draft does not contain any provisions with respect to pre-trial discovery or other means of finding and preserving evidence of trade secrets theft/misappropriation.
  • Despite the European Commission’s ambition to provide SMEs, often struggling to develop and in particular enforce a patent portfolio, a means to protect themselves, there is no provision dealing with the recovery of legal fees and costs for the party prevailing in trade secrets litigation.
  • Recovery of legal fees and costs would also offer protection to any party that is unlawfully subjected to trade secrets proceedings.
  • What will be the cross-border effect of a decision finding infringement in one EU member state? Wouldn’t reversing the burden of proof in that event be an efficient way to avoid a multiplication of court proceedings in different EU member states?

Continue Reading The Future of Trade Secret Protection in the EU: A Bird in The Hand is Still Worth Two in The Bush

On November 28, 2013, the European Commission (EC) proposed a directive “on the protection of undisclosed know-how and confidential business information (trade secrets) against their unlawful acquisition, use and disclosure.” If adopted, the directive will establish a common definition of “trade secrets” and set of remedies in all 28 European Union (EU) Member States. The proposed directive now goes to the European Parliament and EU Member State governments via the European Council for adoption.

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