Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to creating authoritative, trustworthy, & distinctive content, which looks to educate and deliver in a manner that only Miletti Law® can. Usually, this content is featured as videos posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With the ball in your court, yours is an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and benefit from the knowledge bombs we drop here!

As the authoritative force in Employment Law, we are committed to providing you with authoritative, up-to-date, and trustworthy content through which you can draw enlightening information to stay ahead of the game in your business. In this regard, this blog is Part V of our multipart series on the “Enforcement of the Protection of Employers’ Confidential Information & Trade Secrets.” In Part IV of this series, we moved the discussion forward with an overview of “The Statute of Limitations under the DTSA” & “DTSA Civil Seizure” and mentioned that the DTSA (Defend Trade Secrets Act) has a three-year statute of limitations for claims. Pursuant to 18 U.S.C. § 1836(d), the period starts after the discovery of the misappropriation or following the discovery of the same after the exercise of reasonable diligence. To keep the discussion alive, we have hammered on “Additional Remedies Provided under the Defend Trade Secrets Act” in this blog, which is Part V of the series.

Additional Remedies Provided under the DTSA

Pursuant to 18 U.S.C. § 1836(b)(3), other remedies other than seizure are provided for by the DTSA if it is found that an individual has misappropriated a trade secret. For instance, pursuant to 18 U.S.C. § 1836(b)(3)(A)(i), an injunction to deter any threatened or actual misappropriation may be granted by a court under two circumstances. Firstly, as opposed to a person’s knowledge of information, an employer provides evidence of threatened misappropriation as the basis of any conditions placed on employment. Secondly, the individual is not barred from entering into an employment relationship by the injunction. Additionally, pursuant to 18 U.S.C. § 1836(b)(3)(A)(ii), affirmative actions may be required for DTSA injunctions where appropriate in order to protect the trade secret. Moreover, pursuant to 18 U.S.C. § 1836(b)(3)(A)(iii), a court may require a reasonable royalty to be paid as a condition for future use of a trade secret, particularly in exceptional cases where ab injunction is rendered inequitable.

In addition, pursuant to 18 U.S.C. § 1836(b)(3)(B), damages may also be awarded via a court order when a trade secret misappropriation is identified. As an additional remedy, a court may order, pursuant to 18 U.S.C. § 1836(b)(3)(C), the offender to pay exemplary damages in twice the amount of damage already awarded, especially in cases where the defendant(s) (former employee and/or new employer) maliciously and willfully misappropriated a trade secret. Furthermore, pursuant to 18 U.S.C. § 1836(b)(3)(D), if a court finds that a party opposes or makes, in bad faith, a motion to terminate an injunction, or the defendant acted in bad faith making a misappropriation claim, then it may also award attorney’s fees.

In our last blog of the series “Fundamental Aspects of Restrictive Covenants,” which is titled “How to Set Enforceable Restraints on an Individual’s Activity!” and accessible at https://milettilaw.com/blog/f/how-to-set-enforceable-restraints-on-an-individuals-activity, we mentioned that courts often enquire about the availability of the inevitable disclosure doctrine when hearing cases on misappropriation and/or loss of confidential information and trade secrets. As you would expect, the inevitable disclosure doctrine may not be available, as the case in blue-pencil states. In such a case, this doctrine is explicitly rejected under federal trade secret law, and, in turn, a court asks the complainant to produce actual evidence of threatened misappropriation. Pursuant to the inevitable disclosure doctrine, if a court finds that an employee’s roles are utterly the same as those carried out for a former employer and it is highly probable and inevitable that the employee would disclose or use the former employer’s confidential information, it may uphold a ruling in favor of irreparable harm.

Nonetheless, pursuant to a state law cause of action where the application of the doctrine is permissible under the state common law, plaintiffs of misappropriation claims can still allege misappropriation, but notwithstanding that the doctrine’s application in such a federal claim is proscribed by the DTSA. This implies that with a pendent state trade secret claim under an inevitable disclosure theory, it is crucial for plaintiffs to choose the jurisdiction where they make such misappropriation claims wisely because the inevitable disclosure doctrine has been adopted in some states and not others.

In Part VI of this series, we will move the discussion forward by providing you with an overview of the “Provisions for Notice and Whistleblowing” provided under the DTSA.

As usual, while you should strive to be #UnusuallyMotivated, stay tuned for more education, training, and legal guidance. In the interim, reach out to us with questions and/or comments on our website at the Contact Us page!

Always rising above the bar,

Isaac T.,

Legal Writer & Author.