Distinguishing Between an Employee's General Knowledge and Trade Secrets
| Publication year | 1994 |
| Pages | 2123 |
| Citation | Vol. 23 No. 9 Pg. 2123 |
1994, September, Pg. 2123. Distinguishing Between an Employee's General Knowledge and Trade Secrets
Employees working for any business may be exposed to trade secrets(fn1) belonging to the employer. When these employees become former employees, they take with them a working knowledge of and experience with much of that proprietary information. The law provides the former employer with legal protection against the former employee's competitive use of such material while attempting simultaneously to protect an employee's mobility and future employment opportunities. These dual, and at times contradictory, goals require the courts to draw a line between the employer's trade secret and the employee's general skill, experience and knowledge. This line is especially difficult to draw for sophisticated employees in highly technical positions.
Courts have considered the following seven factors important in distinguishing between general knowledge of the employee and the trade secrets of the former employer. This article examines the factors that are necessary to show that a former employee has used a trade secret rather than drawing on that employee's own general knowledge and skill to create the competing product or process. Although each of these factors may play a part in the final analysis, no single factor is dispositive.
To be a trade secret, the "secret" must be specifically defined. Its identification cannot be vague, abstract or overbroad.(fn2) Likewise, defining the trade secret with particularity aids in distinguishing between the secret information and the ex-employee's general knowledge and skill.(fn3)
When an ex-employee creates a competing product or process that is very similar to his or her former employer's, the similarity may suggest that the employee used the secret. Similarity alone, however, is not sufficient. Trade secret law does not protect against the copying of another's "secret" through
the use of legitimate means, such as reverse engineering or re-invention.(fn4) Nevertheless, in distinguishing between general knowledge and a trade secret, courts assess the similarity between the competing products or processes.(fn5) Some examples of similarities causing suspicion might include finding the measurements of competing machines matching exactly or finding the former employer's mistakes or special codes in the competing product or process.
The notion of "substantial similarity" does not mean an exact copy. "Functional equivalents" or modifications to the original will suffice as...
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