Yesterday, we wrote about the new trade secret law, which provides a federal cause of action for trade secret infringement. The new law, known as the Defend Trade Secrets Act of 2016 (DTSA), is identified as Public Law 114-153.
It is very normal for aerospace manufacturers to have (or at least claim) trade secrets, and to seek to protect them through agreements with their employees. Such agreements often include confidentiality clauses. They may address trade secrets like product design functions, as well as trade secrets like customer lists and financial data. Provisions of the new law will impose some affirmative burdens on employers, and if you fail to meet those obligations then you could undermine your company’s intellectual property rights.
WHISTLE BLOWER PROTECTION
The DTSA provides whistleblower protection to certain employees who disclose trade secrets to the Government (including in a court filing). The whistleblower immunity applies if the employee discloses a trade secret, but does so in one of these contexts:
- A confidential disclosure to a Federal, State, or local government official, either directly or indirectly, or to an attorney (but only for the purpose of reporting or investigating a suspected violation of law); or
- A disclosure made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
NEW NOTICE REQUIREMENTS
But there is an even more important clause for employers to understand. There is an additional clause in the law that requires employers to provide notice of the whistle blower immunity. This clause says:
(A) IN GENERAL.—An employer shall provide notice of the immunity set forth in this subsection in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
(B) POLICY DOCUMENT.—An employer shall be considered to be in compliance with the notice requirement in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer’s reporting policy for a suspected violation of law.
(C) NON-COMPLIANCE.—If an employer does not comply with the notice requirement in subparagraph (A), the employer may not be awarded exemplary damages or attorney fees under subparagraph (C) or (D) of section 1836(b)(3) in an action against an employee to whom notice was not provided.
(D) APPLICABILITY.—This paragraph shall apply to contracts and agreements that are entered into or updated after the date of enactment of this subsection.
(4) EMPLOYEE DEFINED.—For purposes of this subsection, the term ‘employee’ includes any individual performing work as a contractor or consultant for an employer.
This imposes an affirmative duty on employers to notify their employee of the immunity in the DTSA. This needs to be done in the confidentiality agreement that governs the use of the trade secrets. So if your employees each sign a confidentiality agreement (or employment agreement that includes confidentiality obligations) at the time of hiring, then this should be modified to reflect the requirements of the law. This new language should be reflected in every contract addressing confidentiality provisions that is entered into on or after May 12, 2016 (today).
Old and existing contracts (those entered-into before May 12, 2016) do not need to be modified to reflect this new language, unless they are updated in any way. So if you make any sort of update to a pre-existing contract that addresses confidentiality, then please make sure the modifications also include the new immunity notice language.
There is an option to publish a policy document including the appropriate notice, and then to cross reference that document in the agreements with the employees, consultants and contractors. If you do this, then you should be specific about the revision level of the policy document, to make sure that it includes the appropriate language.
Failure to provide notice can limit the company’s ability to collect certain damages and attorneys fees, to which the company might otherwise be entitled. Eliminating the chance of recovering attorneys fees can make a valid lawsuit economically undesirable.
APPLIES TO CONTRACTORS AND CONSULTANTS, TOO
The definition of employee for these purposes includes contractors and consultants!
So your consulting agreements and other agreements with independent contractors need to reflect this new disclosure language as well. This may be especially important when working with contractors who normally sign a non-disclosure agreement.