Expert: Kacey Cahill - 12/5/2008

Question
I am being accused of misappropriation of trade secrets.  My former employer says that emails that I sent to my home email address from work included trade secrets.  While I did send  emails home, the information in them was not anything that I deemed trade secrets.  The emails included a compliment from a client that I'd worked with (it also included his contact information and some of his account information), and a log of calls that I took from potential clients (a few had first and last names listed, most did not; a few had phone numbers, most did not; a few had some case specifics, most did not).  I forwarded the emails to my personal email because I knew that the company was trying to terminate me, and I needed the information to prove that I was doing a good job (per the client compliment) and that I took all of the calls that came to me.  Never did I intend to give the information to anyone else, and I never forwarded, copied, etc. the emails for anyone else's use.  The information was just for my own personal "paper trail."  What is considered a trade secret?  Could this information be deemed trade secrets?  My former employer's attorney has mentioned gaining access to my computer, hard drive, phone logs, etc.  Can this be done?  Also, I had no non-compete agreement in place.  Thank you very much.

Answer
Klay.  I am going to answer your question with the general guidelines on trade secrets so that you can look at your situation and determine how to respond to your former employer.  I am doing this because these cases get complicated based on the specific facts and this forum is not set up for that type of exchange.  So........

Trade secret law does exist.  It is the way companies like Coke protect their formula.  The idea goes like this -- for information that the company keeps secret and that gives the company a competitive edge, that company will be given "trade secret" protection.  That is, it can sue people who have an obligation to keep it secret and not use it for their own benefit and do so anyway.  
Normally, companies cover the "obligation" part of the equation (mentioned above) by having employees sign confidentiality agreements that say something like "our customer lists, business plans, price lists, (among a bunch of other things) are confidential and proprietary information of the company.....and the employee agrees that he will not tell anyone this information and will not use it to his own benefit."  (in a nutshell).  
If you signed an agreement like that, or it was in the employee manual, or you were otherwise made aware that the information you are being accused over is a trade secret (prior to the date of your accusation) then the company is basing its case on that.  
The issue still remains, however, that you would have to violate the secret or use it not for the benefit of the company.  Meaning, did you tell anyone? Did you use it for your own benefit or that of another?  If not, then you may have violated a company policy about what you can do with this stuff (or violated a term of a contract you signed about what you can put on your own computer, etc.), but generally speaking, you did violate the trade secret.  In other words, is it still a company secret or is anyone else using the information to their benefit????
If you can say that you did not violate the secret as I have explained, then tell them that you have not and that you will return, destroy (whatever they want) the information and certify to the same.  Get a mutual release so they cannot bother you again - i.e. the company releases you from any action, claim, liability related to the situation [describe it].
If you did let the secret out, get a lawyer.  If this is a very important secret, they will come after you very aggressively.  
As for searching your computer, etc., that is a question for an employment lawyer.  I know as an employee, some of your communications are accessible by the company.  For instance, they can search a company computer.  If it is not within their right to search because of your employment, then they need a search warrant.  Again, this is not my area.
The last thing to keep in mind, if you have done something that could be deemed a violation of a trade secret, the company has to first prove that the item is a trade secret.  That is, they took all reasonable measures to protect the secret.  Often times, these cases come down to whether the company did just that.  If they had sales men/women or others discussing this information not under confidentiality agreements with outside parties, then the trade secret status in compromised.  Your actions may still constitute breach of contract, but if the company has rendered it not a trade secret anymore, then that action is go (the cat is out of the bag and they cannot stuff it back in).  Look at it this way.  If Coke keeps the secret formula locked up and you break in and steal it and give it to Pepsi, you violated a trade secret law. If Coke left the formula out on their front lawn blowing in the wind and you walked by and picked it up and then sold it to Pepsi, no violation of trade secret.  You may have trespassed, but not violated trade secret.

Last, non-competes are also a way a company protects itself from their competitors, but it does not apply here.
Good Luck and BE CAREFUL.

I hope this was helpful, but please remember this information is general and is intended for education purposes only.  You should seek the specific advice of an attorney specializing in intellectual property law (with experience in trade secret cases).

Kind Regards,

Kacey Cahill