Assessing Damages for Misappropriation of Trade Secrets
Publication year | 1998 |
Pages | 71 |
Citation | Vol. 27 No. 8 Pg. 71 |
1998, August, Pg. 71. Assessing Damages for Misappropriation of Trade Secrets
Vol. 27, No. 8, Pg. 71
The Colorado Lawyer
August 1998
Vol. 27, No. 8 [Page 71]
August 1998
Vol. 27, No. 8 [Page 71]
Specialty Law Columns
Technology Law and Policy Review
Assessing Damages for Misappropriation of Trade Secrets
by Craig N. Johnson
Technology Law and Policy Review
Assessing Damages for Misappropriation of Trade Secrets
by Craig N. Johnson
In addition to injunctive remedies, a plaintiff may recover
monetary damages for misappropriation of trade secrets under
a variety of theories, including compensatory damages
restitution, royalties, punitive damages, and attorney fees
and costs. The appropriate damage theory depends on the
nature of the trade secret at issue and the circumstances of
its misappropriation.1
This article explores some of the alternative damage theories
available in misappropriation cases under Colorado law, as
well as some of the factual considerations to be taken into
account when selecting the appropriate remedy
The Uniform Trade Secrets Act
Remedy Provisions
Colorado's Uniform Trade Secrets Act2 provides a remedy
for any misappropriation of trade secrets, whether a claim is
asserted under a tort theory or under a breach of contract
theory, as in the case of an alleged breach of an agreement
of confidentiality.3 Under the Trade Secrets Act, a plaintiff
may recover compensatory damages and defendant's profits
from the misappropriation. In the alternative, a plaintiff
may recover a "reasonable royalty" as damages for
the misappropriation
Specifically, the remedies provision of Colorado's
Uniform Trade Secrets Act states:
Except to the extent that a material and prejudicial change
of position prior to acquiring knowledge or reason to know of
misappropriation renders a monetary recovery inequitable, a
complainant is entitled to recover damages for
misappropriation. Damages may include both the actual loss
caused by misappropriation and the unjust enrichment caused
by misappropriation that is not taken into account in
computing actual loss. In lieu of damages measured by any
other methods, the damages caused by misappropriation may be
measured by imposition of liability for a reasonable royalty
for a misappropriator's unauthorized disclosure or use of
a trade secret.4
Election of Remedies
Although some jurisdictions have held that a party injured by
misappropriation must elect between the legal remedy of
compensatory damages and the equitable remedy of restitution
of the defendant's profits earned from the
misappropriation,5 such an election is not necessary under
Colorado law. Initially, Colorado's Uniform Trade Secrets
Act specifically provides that an injured plaintiff may
recover "both the actual loss caused by misappropriation
and the unjust enrichment caused by misappropriation."6
[Emphasis added.] Moreover, Colorado courts have recognized
that both compensatory damages and an accounting of a
defendant's profits may be awarded where necessary to
make a plaintiff whole.7
In Telex Corp. v. International Business Machine Corp.,8 for
example, IBM brought a counterclaim against Telex alleging
that Telex had engaged in unfair competition and
misappropriation of IBM's trade secrets and confidential
information. The district court awarded IBM $7.5 million in
damages, consisting of $4.5 million in lost rentals that IBM
would have realized but for the misappropriation, and an
additional $3 million in damages for profits realized by
Telex in marketing products that utilized IBM's trade
secrets.
Applying Colorado law, the Tenth Circuit affirmed this award,
stating:
The trial court was of the view that IBM should be recouped
for the profit realized by Telex in connection with the
marketing of its products to persons other than those who had
been using IBM products, and attempted to do so by
determining the extent to which Telex had been unjustly
enriched. . . . Not to have allowed such would have been a
denial to IBM of a substantial portion of the damage
sustained by it in connection with the Aspen project. In sum,
we are not inclined to disturb the award of the trial court
of $7,500,000 in connection with the Aspen project.9
Thus, under Colorado law, a party aggrieved by
misappropriation of its trade secrets may claim entitlement
to both compensatory damages and recoupment of profits
through the misappropriation of its trade secrets.
Measures of Compensatory Damages
Agreed Value
The first inquiry in determining a plaintiff's damages
for misappropriation of trade secrets is whether there is a
royalty agreement, or offer or counteroffer in anticipation
thereof, wherein the parties express an agreed value for the
trade secrets at issue.10 If there is no agreed value, the
court will look to other extrinsic sources to determine the
value of the claim.
R&D or "Head Start" Damages
Trade secrets are generally developed through substantial
time and cost.11 The misappropriation of such trade secrets
by another generally eliminates the initial investment in
time and materials and enables it to bring its infringing
product to the market more quickly. The loss of time and
research and development ("R&D") costs is
sometimes referred to as "head start" damages.12
Thus, a party may seek to recover the value of its R&D
that was lost through misappropriation...
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