The Biggest Trade Secret Loophole You’ve Never Heard Of

By James Pooley
May 2, 2018

Here in the U.S. we have a litigation system for pre-trial “discovery” that allows access to virtually every email and every record a company owns.  It costs businesses more than $40 billion every year.  Foreign countries, where there is no “discovery,” sneer at this self-inflicted injury, and foreign companies do all they can to avoid getting involved in it.

Except when we give them a free pass to visit and try it out.

What would you think if I told you that anyone from France or China or Brazil that was just thinking about some legal action in their country could come here and easily force discovery from a U.S. company, even though they couldn’t dream of getting the same information through their home courts?  Crazy, right?  That is exactly what has resulted from a law that’s so obscure it doesn’t even have a name, so we call it by its legal citation: 28 U.S.C. Section 1782.

Congress put Section 1782 on the books decades ago, motivated by the generous impulse to help foreign courts and litigants get information they needed, and to encourage foreign countries to pass similar laws that would give our citizens the same kind of access.  On the first objective, the law has been a resounding success.  In recent years petitions under Section 1782 have grown to over sixty per year.

On the second one, here’s a quick quiz: how many countries do you think have enacted laws inviting our litigants to come and get discovery from their corporations?  Sorry, no prize for guessing the correct answer, zero.  In fact, a number of countries have responded rather rudely by passing laws that prohibit any use inside their borders of otherwise reliable information, just because it is the product of the U.S. discovery system.

But we have forged ahead anyway with our unilateral offer, nursing the hope that someone will emulate our generosity.  What exactly is the offer?  Under Section 1782, any “interested person” can petition a U.S. federal court to force someone “found” here to produce documents and testimony for use in a foreign “proceeding.”

It used to be that everyone assumed that getting an order like this would be at least modestly difficult.  Naturally the discovery would have to be really helpful, and so you would have to show at least that the information would be admissible in the foreign court.  And of course it had to be a court that wanted it, to help inform a proceeding that was, well, proceeding.  And the petitioner, you would assume, would have to be a party to that foreign proceeding.

All of these were reasonable assumptions, but they all turned out to be wrong.  About 15 years ago AMD tried to use Section 1782 to get discovery from Intel that it could then turn over to the European Commission, which it hoped would begin antitrust enforcement against its competitor.  The federal district court denied the petition: no proceedings were underway, only “contemplated.”  No foreign court was involved, only a government agency.  AMD was not a party.  And if the information had been located in Europe it would not have been accessible to the Commission.

The U.S. Supreme Court reversed, holding that the statute was broadly worded, and if Congress wanted to put limitations on it, it had to say so.  Needless to say, this ruling caused a lot of lawyers to dust off their statute books and take another look at Section 1782, causing a dramatic uptick in filings.  In fact, some law firms are now marketing this law to foreign companies as a way to collect information that they couldn’t get in their home courts.

Congress has taken notice, and the House Judiciary Committee recently held a hearing at which I was invited to testify.  There I described the Section 1782 process as a “one way street for the acquisition and export of U.S. information.”

But I wasn’t there to focus on the asymmetry of this law.  My concern was rooted in the fact that it includes no safeguards to ensure that the discovery material — which often can include very sensitive trade secrets — is protected against disclosure or misuse once it lands in the foreign court (or agency).

This is not an abstract problem, I explained.  While U.S. courts regularly issue “protective orders” closely guarding information exchanged in litigation, foreign courts and governments often don’t have any similar tools.  In fact, most countries’ laws are insufficient to protect trade secret rights in general, and even less so when information is in the hands of courts that have to guarantee public access.  Even the European Commission, in proposing the EU Trade Secrets Directive to its member states, recognized that Europe had a serious problem, saying that the “main factor that hinders enforcement of trade secrets in Court derives from the lack of adequate measures to avoid trade secrets leakage in legal proceedings.”

So if we really want to help our sister courts in other countries, we should send them sensitive information only when we have first wrapped it up in limited use restrictions.  That is why I suggested in my testimony to Congress that an important “fix” to Section 1782 would be to require that federal judges consider the risk to U.S. trade secrets when ruling on these petitions.  And if they allow the discovery, it should come with serious, specific requirements on how it can be used in the foreign “proceeding” to avoid loss or damage.

Let’s hope that closing this loophole is something that both political parties can agree on.

You can read my formal remarks here and watch the entire hearing here.

 

The Author

James Pooley

James Pooley is a former Deputy Director of the World Intellectual Property Organization (WIPO). Having returned to Silicon Valley, Mr. Pooley established a private law practice where he specializes in high-level litigation counseling and strategy.

For more than 35 years, Jim has represented clients as lead trial counsel and strategic advisor in high-stakes patent and trade secret disputes. His broad litigation experience, combined with his service as an international diplomat and business executive, make him uniquely qualified to handle today’s global IP challenges. Jim testified before the Senate Judiciary Committee on the Defend Trade Secrets Act, and has worked with congressional staff on the legislation. His most recent book is Secrets: Managing Information Assets in the Age of Cyberespionage, available here.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Bruce F Webster May 2, 2018 9:06 am

    I’ve worked as an expert witness on a number of trade secret cases (related to information technology), but none have been international (US vs. foreign firm), so I was unaware of this asymmetric requirement. Given how seriously protective orders are taken here in the US (I worked on one case where the entire matter was filed under seal, lest the names of the two parties reveal information about their relationship), I can only imagine how a US firm would feel about being forced to respond to trade secret discovery with no real protections in place.

  2. Anon May 2, 2018 9:47 am

    Thank you for an interesting and well-written article.

  3. Eric Berend May 2, 2018 2:14 pm

    The whole enormous conspiracy to strip the U.S. and its inventors of their rightful property, is now revealed in greater scope and detail.

    Need IP protection to foster new technological development? “Get a patent”…..er, umm.

    Well, then: if fortunate enough to be able to practice as a trade secret? Ah, now you can be readily outed to the world, merely for the ‘potantial’ of legal applicability “somewhere else”.

    “Harmonization” is their rallying cry and credo, and it presumes the destruction of all that which took some 500+ years to legitimately establish, and that has renewed the economic and military strength of the nation, time and again, in our past.

    Now, all that would be needed is enough dumbed-down ‘Americans’ to self-hate on their own history and fellow Americans – hmm, tough call. BUT WAIT, there’s the ‘new communism’ in the colleges and childish denigrations to persuade the naive to become enamored of…cue up the “PATENT TROLL”.

    As I have reluctantly posited preivously in comments made on message boards of the weblog:

    Get ready to call China “MASTER”. Get ready to see “ordinary” Americans ordered about by Chinese-made robots controlled by Chinese-made AI.

    The FOOLS (of the IP pirate cabal, and in the U.S. Congress) still think their wealth assures their perpetual ‘Masters Of This Universe’ status and powers. The Chinese and the Russians, will teach ‘them’ just how VERY WRONG ‘they’ are; and, U.S. inventors and U.S. citizens? Mere “collateral damage”!

  4. Lost In Norway May 2, 2018 5:08 pm

    Thank you very much for this well written and informative article. I had never heard about this before because it is outside of my usual operations. But this is nasty. I swear my mantra today has got to be: “The morons did WHAT?!”.

  5. Anon May 2, 2018 7:36 pm

    Having now digested the linked testimony before the House Judiciary Subcommittee, I have great pause in two separate – but related – aspects.

    First, it is certainly of no small magnitude just what Mr. Pooley advocates. While artfully “minimized,” and made to appear eminently reasonable, what is being advocated is nothing less than demanding and imposing US Trade Secret judicial procedures on foreign Sovereigns. Far more is asked – in the benefit of something that provides society far less – in relation to any “advocacy” for patent systems.

    The second (related) point is that patent systems are UNDER “sold” (even subtlety denigrated) at the expense of promoting the “worth” of a Trade Secret regime. This is done to the extent that the use of the “protect small guys” meme starting ringing holllow.

    The BETTER path of protecting those small guys is to REVERSE the emphasis and put the energy into debunking the “patent tr011” myth (instead of embracing it), put the energy into making the choice of protection Patents insteaed of Trade Secrets (alarming stats, but the way on the provided preference study) by emphasizing the relative societal give back INSTEAD of emphasizing (in an ‘oh no, be scared’ manner) the aspect of strict liability afforded by patents (that’s a feature – not a bug).

    It should be clear that my views are VERY biased away from guilds and the tool of guilds and towards the US Sovereign original promise of the Quid Pro Quo of the patent system.

    Any time I see such passionate (and artful -no doubt here that Mr. Pooley is an exceptional advocate) advocacy in what amounts to be AGAINST patents (as being sacrificed for Trade Secrets here), I become aware and “be ware” of what is being sold.

  6. Eric Sherby May 3, 2018 4:38 am

    I respectfully submit that Mr. Pooley is “under”-informed as to the level of reciprocal discovery (evidence-taking) that is available to American litigants from ISRAELI courts.

    Not only is Israel a party to the Hague Evidence Convention, and not only is Israel one of the few H.E.C. signatories that did not make an “opting out” declaration (under Article 23) regarding pretrial documentary discovery, but Israel even enacted a statute entitled the “Legal Assistance Among States Law (1998),” under which a private lawyer may be appointed to oversee the taking of American-style depositions. Every year our law firm ASSISTS AMERICAN litigants in using the ISRAELI court system to obtain evidence for use in American court proceedings.

    So, although Mr. Pooley might be correct that some other countries have reacted “rudely” to the American example of opening courts to foreign litigants, ISRAELI courts have followed the American initiative most “politely.”

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