Trade Secrets: Barbie, Papermaster and Preventive Law

Probably too long of a post but, businesspeople, you need to read this Enforcing Property Rights In Confidential And Proprietary I

In Bryant v. Mattel Inc. , a case pending in the United States District Court for the Central District of California, Mattel, maker of the Barbie doll, asserted that a former employee, Carter Bryant, began drawing designs for the Bratz doll - made by his new employer MGA Entertainment ("MGA") - while he was still employed by Mattel. Mattel instituted the action in 2004 claiming that Bryant violated his employment agreement, which, among other things, gave Mattel rights to all of his doll designs as an employee of Mattel. In August 2008, Mattel obtained a jury award of $100 million in damages for copyright infringement and contract-related claims. The court thereafter ruled that Mattel owned all the right, title and interest (including all copyrights) in and to the Bratz-related works, ideas and concepts that Bryant conceived, including the Bratz name, and Mattel obtained a permanent injunction against MGA's sale of the Bratz dolls. In January 2009, the court modified its prior order to allow MGA to continue to sell Bratz dolls through the end of 2009. At a hearing in February 2009, counsel to Mattel conveyed that Mattel was interested in settling the litigation and that there had been some activity on this front.

In International Business Machines Corp. v. Papermaster , 2008 WL 4974508 (S.D.N.Y. Nov. 21, 2008), the United States District Court for the Southern District of New York ordered Mark Papermaster, a former IBM senior executive, to immediately cease working as Apple's Senior Vice President, Devices Hardware Engineering, in the iPod/iPhone Division. Papermaster - who had worked for IBM for 26 years - had served as Vice President of IBM's Blade Development Unit in the preceding two years. Papermaster worked throughout his tenure at IBM on a technology used to develop microprocessors and servers, and he was viewed within IBM as its top expert in "Power" architecture. The Court found that Papermaster was "fully aware of many of IBM's most sensitive trade secrets," having "worked for years with some of the crown jewels of IBM's technology." Because of his expertise, IBM selected Papermaster to be a member of its Integration & Values Team, an elite group of approximately 300 executives that is comprised of its key leaders and develops IBM's corporate strategy.

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These cases underscore just a few steps that employers may take to enhance their litigation positions prior to ever setting foot in the courthouse.

1. Ensure that your confidentiality and restrictive covenant agreements have language confirming that inventions, innovations, processes, discoveries, improvements, ideas, system designs, technical know how, computer programs and related documentation, literary works, artistic works, copyright works or any other works of authorship developed, created, made, conceived, invented, discovered, acquired, suggested or reduced to practice by the employee, either alone or jointly with others during the employee's employment by the employer, whether or not during working hours, and related in any manner to the work or other activities carried on by the employer shall be (i) the sole property of the employer and (ii) works-made-for-hire to the extent allowed by the Copyright Act. The developments provision should also provide that to the extent the developments are not works-made-for-hire, the employee assigns all right, title and interest in the developments to the employer.

2. Based on the nature of the employer's business and the services the employee will be performing for the employer, the employer should also consider requiring the employee at the beginning of his employment to set forth a complete list of developments that he has conceived, developed, created, made, invented, discovered, acquired, suggested or reduced to practice prior to the commencement of his or her employment that he or she considers to be his or her property or that of third parties and that he or she wishes to have excluded from the scope of the confidentiality agreement he or she is being asked to execute.

3. Consider whether it is appropriate to ask a new or existing employee to execute an agreement with non-competition restrictions. The immediate reaction of many entities is that "tying up" as many employees as possible enhances their business goals. As the IBM/Apple dispute evidences, however, less is often more. That Papermaster - exposed to IBM's most sensitive trade secrets - was one of only a few hundred of IBM's 400,000 employees required to execute a non-competition agreement weighed in favor of the court's enforcement of the prohibition against him working for competitors within one year of leaving IBM.

4. Make sure your confidentiality and restrictive covenant agreements have language by which the employee acknowledges and agrees that, by virtue of his or her position, services, and access to and use of confidential records and proprietary information, any violation of any of the undertakings contained in the agreement would cause the employer immediate, substantial and irreparable injury for which it has no adequate remedy at law. The Papermaster court relied on Papermaster's acknowledgment that IBM would suffer irreparable harm if he violated the agreement in finding that IBM had proven a likelihood of irreparable harm.

5. In cases regarding confidential information and restrictive covenants, e-mails between the departing employee and his or her new employer are often rich sources of favorable evidence. Employers must implement e-mail and communication policies which, among other things, confirm that (a) electronic communications are the property of the employer and not the private property of individuals, (b) employees' electronic communications are not considered private, (c) employees shall not transmit without prior express authorization any trade secrets or other confidential or proprietary information and (d) the employer reserves the right at any time, in its sole discretion, with or without notice, to review, monitor and disclose its employees' electronic communications. When a dispute arises with an employee or former employee regarding confidential information or restrictive covenants, the employer should promptly review the employee's e-mails to ascertain whether any incriminating evidence is included within those e-mails. In many industries, employers' most critical assets walk out the door at the end of each day.