ALI-ABA Topical Courses Trade Secrets From the ... - ALI CLE

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64prove at trial that Botticella would misappropriate these tradesecrets if allowed to work at Hostess.A person has misappropriated a trade secret underPennsylvania law when he acquires knowledge of another’strade secret in circumstances giving rise to a duty to maintainits confidentiality and then discloses or uses that trade secretwithout the other’s consent. 12 Pa. Cons. Stat. Ann. § 5302(West 2004). A court may enjoin the actual or threatenedmisappropriation of a trade secret. Id. § 5303(a). Afterdetermining that Bimbo was seeking an injunction on thebasis of threatened misappropriation, the District Court foundthere was “a substantial likelihood, if not an inevitability, that[Botticella] will disclose or use Bimbo’s trade secrets in thecourse of his employment with Hostess.” Bimbo Bakeries,2010 WL 571775, at **11-14. Accordingly, the Courtconcluded that Bimbo had demonstrated a likelihood ofsucceeding on the merits of its claim.Botticella contends this conclusion was wrong as amatter of law because (a) a court only can enjoin a defendantfrom beginning a new job to protect a former employer’stechnical trade secrets, (b) such an injunction only can issuewhere it would be “virtually impossible” for the defendant toperform his new job without disclosing trade secrets, (c)Bimbo did not present any evidence from which the DistrictCourt could conclude that Botticella’s responsibilities atHostess would lead him to disclose Bimbo’s trade secrets, and(d) the District Court drew impermissible adverse inferencesagainst Botticella in a way that effectively shifted the burdenof proof from Bimbo to Botticella.17
651. Air Products and Inevitable DisclosureThe parties disagree about the circumstances that mustbe found to exist before a court can enjoin a defendant frombeginning new employment. In its opinion granting thepreliminary injunction, the District Court stated:When analyzing threatened misappropriation oftrade secrets, Pennsylvania courts apply the‘inevitable disclosure doctrine.’ That doctrineessentially posits that ‘a person may be enjoinedfrom engaging in employment or certain aspectsof his employment where that employment islikely to result in the disclosure of information,held secret by a former employer, of which theemployee gained knowledge as a result of hisformer employment situation.[’] The scope ofthe injunctive relief depends on the particularcircumstances of the case.Bimbo Bakeries, 2010 WL 571774, at *11 (citing VictaulicCo. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007) (omittingcitations); Air Prods. & Chems., Inc. v. Johnson, 442 A.2d1114, 1120 (Pa. Super. Ct. 1982)). In other words, theDistrict Court concluded, albeit somewhat paradoxically, thatPennsylvania courts apply the “inevitable disclosure doctrine”to grant injunctions based not on a trade secret’s inevitabledisclosure but on its likely disclosure. Cf. Pepsico, Inc. v.Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995) (“[a] plaintiffmay prove a claim of trade secret misappropriation by18
Page 1 and 2: 47ALI-ABA Topical CoursesTrade Secr
Page 3 and 4: 49Michael L. Banks (argued)Morgan,
Page 5 and 6: 51quality and cost, labor issues, a
Page 7 and 8: 53continued working for Bimbo notwi
Page 9 and 10: 55to work for a competitor. Moreove
Page 11 and 12: 57Following Botticella’s departur
Page 13 and 14: 59D. Procedural HistoryAfter Bottic
Page 15 and 16: 61consequently, also is the primary
Page 17: 63a. Information in Bimbo’s code
Page 21 and 22: 67sale of on-site gas during his em
Page 23 and 24: 69regardless of those secrets’ te
Page 25 and 26: 71hired to provide information he o
Page 27 and 28: 73would be “virtually impossible
Page 29 and 30: 75preliminary injunction on its tra
Page 31 and 32: 77The Superior Court subsequently s
Page 33 and 34: 79have rested on its interpretation
Page 35 and 36: 815. Adverse Inference Based on Bot
Page 37 and 38: 83needed in the interim to protect
Page 39 and 40: 85which he or she is best suited.
Page 41 and 42: 87IN THE UNITED STATES DISTRICT COU
Page 43 and 44: 89made in their Rule 56.1 statement
Page 45 and 46: 91during Maremont’s absence, a gu
Page 47 and 48: 931125(a)(1)(A). As the Seventh Cir
Page 49 and 50: 95damages based on their representa
Page 51 and 52: 97Therefore, the Court denies both
Page 53 and 54: 99judgment as to Count III of the S
Page 55 and 56: 101CONCLUSIONFor the these reasons,
Page 57 and 58: Case3:11-cv-03474-MEJ Document28 Fi
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Case3:11-cv-03474-MEJ Document28 Fi
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Pure Power Boot Camp v. Warrior Fit
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Faiveley Transport Malmo AB v. Wabt
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139Sasqua Group, Inc. v. Courtney,
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