I was recently retained to file a lawsuit against a former employee of my client for taking various confidential information.  We sued for, among other things, misappropriation of trade secrets.

There is a distinction between confidential information and trade secrets.  Confidential information is a trade secret if it has economic value from not being known generally to others, and has been the subject of efforts to maintain its secrecy.

One issue that often arises in these cases is when customer information qualifies as a trade secret.   In a case called Morlife, Inc. v. Perry (1997) 56 Cal. App.4th 1514, 1521 a commercial roof repair company brought an action against former employees for misappropriation of confidential customer information in violation of the Uniform Trade Secrets Act. The plaintiff alleged that, after leaving plaintiff’s employ, defendants actively solicited plaintiff’s customers, whose identity defendants had learned as a result of having worked for plaintiff.

In concluding Morlife’s customer list fell within the definition of a trade secret under the UTSA, the court found that “Morlife provides a relatively unusual roofing service, namely, commercial roof repair and maintenance, as distinguished from replacement roofing.” Its customer list was “a compilation, developed over a period of years, of names, addresses, and contact persons, containing pricing information and knowledge about particular roofs and roofing needs of customers using its services: as such, it has independent economic value. The identity of those particular commercial buildings using such services is not generally known to the roofing industry.”

The court further emphasized “Morlife made reasonable efforts to maintain the secrecy of its customers’ identity by limiting circulation of its customer lists and by advising its employees, including [appellants] Lloyd Perry and Carl Bowersmith, through an employment agreement and an employee handbook, that Morlife considered the information valuable and confidential.”

The amount of effort used to acquire the information is a key factor the courts look at when deciding when a customer list qualifies as a trade secret.

Robert G. Klein, Esq. is a Los Angeles trademark attorney and a Los Angeles business lawyer who specializes in trademark infringement, copyright infringement, and unfair competition.  He feels it is important to hire a Los Angeles trademark lawyer and a Los Angeles business lawyer if one is involved in litigation in that locale.  Robert G. Klein is a prominent Los Angeles business attorney and is available for consultation on matters involving trademark infringement, copyright infringement, and business law matters.  He has successfully obtained many multi-million dollar jury verdicts. Many of Mr. Klein’s court decisions have been published as case authority and he has appeared before the United States Supreme Court for oral argument. Mr. Klein has also published “Consumer List: Trade Secret or Fair Game?”, which is an article published in the Los Angeles Lawyer Magazine. Los Angeles trademark infringement attorney Robert G. Klein can be reached at (213) 996-8508 or visit our web site at http://www.kleinlitigation.com

Posted in Business Litigation, Intellectual Property, Trade Secret  |   No Comments/Questions

I am the attorney for an individual in the entertainment industry who had an interesting idea for a television or feature film.   In order to attract a producer who could arrange to finance this movie, my client first needed to obtain a screenplay.  He approached an individual and offered to pay him $30,000 to write the screenplay.

The parties entered into a written agreement.  The screenwriter did not want the agreement to say he was the writer because of various obligations he had to his guild that he wanted to avoid.  My client paid $30,000 for a completed screenplay.

The parties are now at odds and the writer is claiming he was not paid for the script and that he owns the screenplay.  This raises the issue of ownership of the copyrights.

We believe this screenplay is what is known as a “work for hire” and that my client owns the copyrights.  A work for hire is defined as a “work prepared by an employee within the scope of his or her employment”.  If not created as part of an employer-employee relationship, the work can still qualify as a work for hire if it fits into one of none categories including that it was part of a motion picture, and the parties agree in writing that it is a work for hire.

While this sounds simple enough, there is a ton of case law that defines when the relationship was that of employer-employee and when a written agreement sufficiently complies with the copyright law.

Robert G. Klein, Esq. is a Los Angeles trademark attorney and a Los Angeles business lawyer who specializes in trademark infringement, copyright infringement, and unfair competition.  He feels it is important to hire a Los Angeles trademark lawyer and a Los Angeles business lawyer if one is involved in litigation in that locale.  Robert G. Klein is a prominent Los Angeles business attorney and is available for consultation on matters involving trademark infringement, copyright infringement, and business law matters.  He has successfully obtained many multi-million dollar jury verdicts. Many of Mr. Klein’s court decisions have been published as case authority and he has appeared before the United States Supreme Court for oral argument. Mr. Klein has also published “Consumer List: Trade Secret or Fair Game?”, which is an article published in the Los Angeles Lawyer Magazine. Los Angeles trademark infringement attorney Robert G. Klein can be reached at (213) 996-8508 or visit our web site at http://www.kleinlitigation.com

Posted in Business Litigation, Copyright, Intellectual Property  |   No Comments/Questions

I appeared today in the United States Bankruptcy court on a motion I filed to have a lawsuit dismissed against my client.  I represent a man who owned a corporation involved in the manufacturer of Mexican foods that filed for Chapter 11 bankruptcy protection.  The bankruptcy judge ordered a Trustee be appointed and liquidate the company.  Included in the sale were the recipes the Debtor used while operating the business.

The new buyers were disappointed with their sales and sued my client and their chief competitor claiming that my client must have taken these recipes they claimed were trade secrets and conspired with their competitor to unfairly compete in the sale of certain items of Mexican foods.

During that state court action I wrote a letter challenging their allegations and questioning whether they even had clear title to some of these recipes based upon the facts as I knew them.  Based upon this letter, the new buyers filed a new lawsuit against my client in the bankruptcy court seeking an order declaring the parties rights to these recipes and an injunction.

I filed a motion to dismiss this lawsuit claiming there was no issue for the court to determine and therefore no controversay.  Without a case or controversay the federal court had no jurisdiction.  I also argued that any letter I wrote arising out of the state court lawsuit was subject to an absolute litigation privilege.

The bankruptcy judge agreed with me and dismissed the lawsuit without leave to amend.

Justice prevailed.

Posted in Business Litigation, Intellectual Property, Trade Secret  |   No Comments/Questions