Trade Secret Report

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 1
• Publication year: 2022
• Author: Conor Tucker
• topic: Intellectual Property,Civil Procedure

TRADE SECRET REPORT

Conor Tucker
Wilson Sonsini Goodrich & Rosati

PROTECTABLE TRADE SECRET-CUSTOMER LISTS REASONABLE MEASURES—JURY ISSUE

Armor Corr Health Serv., Inc. v. Teal, No. 19-CV-24656, 2021 WL 5834245 (S.D. Fla. Dec. 8, 2021).

Granting, in part, summary judgment, the S.D. Florida court held that where a customer list is otherwise public, it is not a trade secret, "[n]otwithstanding [plaintiff's] representation that its customer lists are confidential." Plaintiff "serves only governmental entities and [] the identity of [its] customers are [therefore] available to the public."

The S.D. Florida court held differently for pricing information, finding that even though much of the final price paid could be pieced together using FOIA requests, the full price and the process plaintiff uses to price its products during bidding is a protectable trade secret.

Denying, in part, summary judgment, the court indicated that a jury was better suited to determine "the fact intensive inquiry of whether [plaintiff] employed reasonable measures to protect its trade secrets."

TRADE SECRET—OWNERSHIP REMEDIES—DTSA EXEMPLARY DAMAGES AND ATTORNEYS' FEES

Silverthorne Seismic, LLC v. Sterling Seismic Serv., Ltd., No. CV H-20-2543, 2021 WL 4710813 (S.D. Tex. Oct. 7, 2021).

In a case involving seismic data, parties moved for cross-summary judgment on issues of ownership, liability, and damages.

Defendant challenged plaintiff's ownership of the information. Plaintiff argued that seismic data, by analogy to oil, should follow the "rule of capture" which "gives a mineral rights owner title to the oil and gas produced from a lawful well bottomed on the property, even if the oil and gas flowed to the well from beneath the owner's other tract." The court rejected that rule, as no other court has adopted it, and found that the reason for the "rule of capture" in the oil and gas context (that oil may shift underground across surface boundaries) does not apply. Rather, the court held (adopting rules applied in Louisiana and Texas) that seismic data belongs to the mineral rights holders. Because plaintiff refused to produce agreements with mineral rights holders, the jury could conclude it lacked the rights; but the court denied summary judgment

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where other contracts indicated circumstantial evidence of licenses with mineral rights holders.

The court denied plaintiff's motion for summary judgment of liability, finding that disclosures prior to signing of an NDA raised a jury issue...