Response to Similar Secrets by Fishman & Varadarajan

Professors Joseph Fishman and Deepa Varadarajan have argued trade secret law should be more like copyright law. Specifically, they argue trade secret law should not prevent people (especially departing employees who obtained the trade secret lawfully within the scope of their employment) from making new end uses of trade secret information, so long as it's not a foreseeable use of the underlying information and is generally outside of the plaintiff's market. The authors made this controversial argument at last year's IP Scholars conference at Berkeley Law, and in their new article in University of Pennsylvania Law Review, called "Similar Secrets."

My full response to Similar Secrets is now published in the University of Pennsylvania Law Review Online. It is called: "Should Dissimilar Uses Of Trade Secrets Be Actionable?" The response explains in detail why I think the answer is, as a general matter, YES. It can be downloaded at: https://www.pennlawreview.com/online/168-U-Pa-L-Rev-Online-78.pdf

There is lots to like here. Pam Samuelson has written a rave review on JOTWELL, writing that she finds the article's thesis "surprisingly persuasive," and noting that "[t]he adaptations recommended [in Similar Secrets] may not impact trade secrecy law as much as some practitioners might fear[.]"  Like Samuelson, I agree that a close read of the authors' proposal shows that it would not actually condone most conceivable uses of trade secrets. In particular, the authors make clear that end uses that destroy the secrecy of valid trade secrets, even if totally dissimilar, would still be illegal. However, unlike Samuelson, I disagree with the authors' underlying premise. Allowing people to use valid, non-expired trade secrets, whether for directly competing uses or for completely dissimilar, non-competitive end uses, fundamentally conflicts with the idea that the goal of trade secret law, as distinguished from the goal of copyright law, is to preserve the secrecy of information.

Like the authors, I too worry that trade secret owners have incentives to over-claim. Employers can use the threat of an injunction to turn trade secrets into "hot potatoes," and effectively into shackles, that prevent workers from doing great things when they leave. But trade secret law already has other doctrines designed to limit what can be protected as a trade secret in the first instance. The big one is the law's exclusion from protection of "general knowledge, skill, and experience." I don't think we should try to tweak the infringement standard to cover fewer uses of information. That would allow former employees to reveal too much of their employers' valuable, secret information, and would risk undermining the one of the biggest reasons we have trade secret law in the first place: encouraging employers to share secrets with their workers.  Instead, if information is deemed protectable as a trade secret, and that is a big if, the full scope of the remedy needs to be available, subject to eBay and equitable considerations. On eBay's impact on trade secret law, see Elizabeth Rowe's new empirical article, "eBay, Permanent Injunctions, and Trade Secrets, forthcoming in Washington & Lee Law Review."

My full response to Similar Secrets is now published in the University of Pennsylvania Law Review Online. It is called: "Should Dissimilar Uses Of Trade Secrets Be Actionable?" The response explains in detail why I think the answer is, as a general matter, YES. It can be downloaded at: https://www.pennlawreview.com/online/168-U-Pa-L-Rev-Online-78.pdf