IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Posts Tagged: "ex parte seizures"

Ex Parte Seizures Five Years After the Enactment of the Defend Trade Secrets Act

Almost five years has passed since the enactment of the Defend Trade Secrets Act (DTSA) on May 11, 2016, which provides for civil relief for the theft of trade secrets. The most controversial provision, 18 U.S.C. § 1836(b)(2), authorizes a federal court to issue an order, in extraordinary circumstances, and upon an ex parte application based on an affidavit or verified complaint, to provide for seizure of property necessary to preserve evidence or to prevent the propagation or dissemination of the trade secret. Thus, the issuance of a seizure order is limited to “extraordinary circumstances.” According to the House Report, the “ex parte seizure provision is expected to be used in instances in which a defendant is seeking to flee the country or planning to disclose the trade secret to a third party immediately or is otherwise not amenable to the enforcement of the court’s orders.” In other words, it is intended to stop the dissemination of a trade secret, especially overseas, before its value has been lost through public disclosure. Thus, it provides a trade secret owner with the ability to mitigate the risk that trade secrets are irrevocably lost, transferred, or moved beyond the jurisdiction of the court.

Cubs, MLB seek ex parte seizure of counterfeit merchandise sold outside Wrigley Field

There are a large number of trademarks owned both by the Cubs and by MLB which are being infringed upon, according to the suit. The Cubs want to prevent the sale of goods including indicia associated with the team including famous former players like Ryne Sandberg and Ernie Banks; references to team successes like 1908, the last year in which the Cubs won the World Series; traditions like the “W” flag or “Go Cubs Go”; broadcast personalities; and famous Cubs managers. The Cubs are also looking to block goods depicting Wrigley Field as the Cubs own word and design marks related to the stadium, its iconic marquee and its ivy-covered red brick walls.

Available Remedies under the DTSA

The DTSA amends the Economic Espionage Act of 1996 (“EEA”) to provide for civil remedies in federal courts for the misappropriation of trade secrets. The new Section 1836(b) provides for both equitable and monetary relief. Subsection 1836(b)(3) authorizes a federal court to grant an injunction to prevent actual or threatened misappropriation of trade secrets. The language is identical to § 2 of the Uniform Trade Secrets Act (“UTSA”). However, there are a number of limitations as to when a court may issue an injunction under the DTSA. First, the injunction may not “(I) prevent a person from entering into an employment relationship, and that conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows ….” Section 1836(b)(3)(A)(i)(I).

Handle with Care: Civil Seizure Under the Defend Trade Secrets Act

The DTSA’s provision for civil seizures provides victims of trade secret theft with a powerful remedy to prevent further dissemination of the trade secret and limit further harm. However, Congress balanced this powerful tool with severe consequences for those movants who misuse it. When seeking to use this remedy, victims of trade secret theft must be careful to comply with all the detailed requirements or they may be far worse off than before. It is a powerful weapon, but like most powerful weapons, it must be handled with great care lest it cause serious self-inflicted injury.

Knocking out the knockoffs: IP learnings from a successful TRO and seizure

Protecting intellectual property today is more challenging than ever, and the stakes are high. An open and rapid-fire exchange of information has become the norm in our digital age. Add the global nature of the market and persistent technological advancements, and it should come as no surprise that imitators stand ready to capitalize on the latest breakthroughs. As their low-cost, low-quality products flood a market, not only do they claim valuable market share, but they have potential to erode the credibility of an entire category and its leaders. Any company that produces a product must consider the prospect of knockoffs, and the potential impact imitations will have on market share and brand perceptions. Obtaining IP protection directed at mitigating knockoffs can be highly beneficial, particularly for start-ups that may have limited resources and brand awareness.

President Obama Signs Federal Defend Trade Secrets Act

The DTSA amends the federal Economic Espionage Act of 1996 to create, for the first time, a federal civil remedy for the misappropriation of trade secrets. This new law provides a clear path to enforce trade secret rights in federal court. Proponents of the DTSA argue that this will lead to more uniformity and predictability in applicable standards. However, that remains to be seen. The DTSA does not preempt any existing state laws governing trade secret enforcement. Accordingly, to the extent that state laws differ from each other and the DTSA, the differences will likely persist despite the new federal scheme.

Five Things to Know About the Defend Trade Secrets Act

On April 27, 2016, Congress passed the Defend Trade Secrets Act (“DTSA”), which President Obama is scheduled to sign later today. The DTSA extends the current Economic Espionage Act of 1996 (“EEA), which criminalizes trade secret thefts, to the civil arena. This means for the first time, trade secret owners can now bring suits in federal district courts, without having to resort to another basis for jurisdiction, such as the ill-fitting Computer Fraud and Abuse Act. While not without critics, the DTSA is a major step forward in the protection of intellectual property in the United States, not least because federal law now fully recognizes four types of intellectual property (patents, copyrights, and trademarks). This article highlights five important things that every trade secret owner should know, which includes almost every company in the U.S.