Protection of Trade Secrets Overview of Current Law and Legislation Updated April 22 2016 Congressional Research Service https crsreports congress gov R43714 Protection of Trade Secrets Overview of Current Law and Legislation Summary A trade secret is confidential commercially valuable information that provides a company with a competitive advantage such as customer lists methods of production marketing strategies pricing information and chemical formulae Well-known examples of trade secrets include the formula for Coca-Cola the recipe for Kentucky Fried Chicken and the algorithm used by Google’s search engine To succeed in the global marketplace U S firms depend upon their trade secrets which increasingly are becoming their most valuable intangible assets However U S companies annually suffer billions of dollars in losses due to the theft of their trade secrets by employees corporate competitors and even foreign governments Stealing trade secrets has increasingly involved the use of cyberspace advanced computer technologies and mobile communication devices thus making the theft relatively anonymous and difficult to detect The Chinese and Russian governments have been particularly active and persistent perpetrators of economic espionage with respect to U S trade secrets and proprietary information In contrast to other types of intellectual property trademarks patents and copyrights that are governed primarily by federal law trade secret protection is primarily a matter of state law Thus trade secret owners have more limited legal recourse when their rights are violated State law provides trade secret owners with the power to file civil lawsuits against misappropriators A federal criminal statute the Economic Espionage Act EEA allows U S Attorneys to prosecute anyone who engages in “economic espionage” or the “theft of trade secrets ” The EEA’s “economic espionage” provision punishes those who misappropriate trade secrets with the intent or knowledge that the offense will benefit a foreign government instrumentality or agent The EEA’s “theft of trade secrets” prohibition is of more general application involving the intentional theft of a trade secret related to a product or service used in or intended for use in interstate or foreign commerce with the intent or knowledge that such action will injure the trade secret owner In addition to criminal enforcement of the statute the EEA authorizes the Attorney General to bring a civil action to obtain injunctive relief against any violation of the EEA However because the U S Department of Justice and its Federal Bureau of Investigation have limited investigative and prosecutorial resources as well as competing enforcement priorities some observers assert that the federal government cannot adequately protect U S trade secrets from domestic and foreign threats They have urged Congress to adopt a comprehensive federal trade secret law in order to promote uniformity in trade secret law throughout the United States and to more effectively deal with trade secret theft that crosses state and international borders a challenging problem for state courts to address Among other things they support the establishment of a federal civil cause of action for trade secret misappropriation to allow U S companies to obtain monetary and injunctive relief when their trade secret assets are stolen In the 114th Congress the Defend Trade Secrets Act DTSA H R 3326 and S 1890 has been introduced that would create a federal private right of action for trade secret misappropriation S 1890 was reported out of the Senate Judiciary Committee in late January 2016 with an amendment in the nature of a substitute On April 4 2016 the Senate passed S 1890 by a vote of 87-0 On April 20 the House Judiciary Committee unanimously approved S 1890 Congressional Research Service Protection of Trade Secrets Overview of Current Law and Legislation Contents Introduction 1 Background 2 Definition of a Trade Secret 2 Eligible Subject Matter and Acquisition of Rights 2 Duration of Protection 3 Misappropriation 3 Trade Secrets As a Form of Intellectual Property 4 Purpose of Trade Secret Law and Comparison to Patent Law 4 Historical Development of Trade Secret Law 5 Current Legal Landscape for Trade Secret Protection 6 State Law 6 Federal Law 7 Trade Secrets Act 7 Economic Espionage Act 7 International Law 11 The Growing Problem of Trade Secret Theft and Economic Espionage 13 Measuring Economic Loss 13 Types of Offenders 14 Domestic 14 Foreign 14 Enforcement of Trade Secret Rights 15 Litigation and Prosecution 15 Executive Branch Actions 16 Administration Strategy 16 Special 301 17 Free Trade Agreements TPP and TTIP 17 Limitations of Current Law and Proposed Changes 18 In Support of a Federal Civil Cause of Action for Trade Secret Theft 18 In Opposition to a Federal Civil Trade Secret Remedy 20 Legislation in the 114th Congress The Defend Trade Secrets Act 22 Contacts Author Information 24 Congressional Research Service Protection of Trade Secrets Overview of Current Law and Legislation Introduction1 U S corporations face a “growing and persistent threat” by individuals rival companies and foreign governments that seek to steal some of their most valuable intangible assets—their trade secrets 2 The tools tactics and methods used by such perpetrators vary widely but increasingly have involved the use of cyberspace and sophisticated technologies that “mak e it possible for malicious actors whether they are corrupted insiders or foreign intelligence services FIS to quickly steal and transfer massive quantities of data while remaining anonymous and hard to detect ”3 As former Attorney General Eric Holder once opined There are only two categories of companies affected by trade-secret theft those that know they’ve been compromised and those that don’t know yet A hacker in China can acquire source code from a software company in Virginia without leaving his or her desk 4 Globalization has been cited as a major contributor to the increased incidents of trade secret theft In many ways trade-secret theft is a foreseeable outgrowth of expanding international markets When large multinational companies expand their overseas operations they almost inevitably face challenges related to supply accountability and protection against such theft Their foreign manufacturing operations and joint-venture partners require customer lists internal standards manufacturing processes information on sources of goods recipes and production and sales strategies in order to carry out their operational responsibilities Each new piece of information that is sent overseas opens a company’s supply chain and puts its valuable intellectual property at risk 5 There is significant congressional interest in reducing the problems of trade secret theft and economic espionage that U S businesses currently face as demonstrated by significant legislative activity in the 114th Congress and hearings held in the 114th6 and 113th Congresses 7 This report provides an overview of existing federal state and international laws governing trade secret 1 Portions of this report have been borrowed and adapted from CRS Report RL34109 Intellectual Property Rights Violations Federal Civil Remedies and Criminal Penalties Related to Copyrights Trademarks and Patents by Brian T Yeh CRS Report R41391 The Role of Trade Secrets in Innovation Policy by John R Thomas and CRS Report R42681 Stealing Trade Secrets and Economic Espionage An Overview of 18 U S C 1831 and 1832 by Charles Doyle 2 Office of the National Counterintelligence Executive Foreign Spies Stealing US Economic Secrets in Cyberspace October 2011 at i available at http www ncix gov publications reports fecie_all Foreign_Economic_Collection_2011 pdf 3 Id 4 Siobhan Gorman and Jared A Favole U S Ups Ante for Spying on Firms WALL ST JOURNAL February 21 2013 reproducing a statement made by Attorney General Holder at a White House conference 5 The Report of the Commission on the Theft of American Intellectual Property at 41 May 2013 available at http www ipcommission org report IP_Commission_Report_052213 pdf This commission is a private bipartisan initiative led by former U S Director of National Intelligence Dennis Blair and former U S Ambassador to China Jon Huntsman 6 Protecting Trade Secrets the Impact of Trade Secret Theft on American Competitiveness and Potential Solutions to Remedy This Harm Hearings Before the Senate Judiciary Comm 114th Cong 1st Sess 2015 7 Cyber Espionage and the Theft of U S Intellectual Property and Technology Hearings Before the House Energy Commerce Comm Subcomm on Oversight and Investigations 113th Cong 1st Sess 2013 Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 Congressional Research Service 1 Protection of Trade Secrets Overview of Current Law and Legislation protection describes the limitations of these legal regimes and reviews pending legislation the Defend Trade Secrets Act S 1890 that is intended to address such deficiencies Background Definition of a Trade Secret U S trade secret law protects secret valuable business information from theft and espionage While it has been said that an “exact definition of a trade secret is not possible ”8 a trade secret generally consists of confidential commercially valuable information 9 One U S federal court has described trade secrets as follows A trade secret is really just a piece of information such as a customer list or a method of production or a secret formula for a soft drink that the holder tries to keep secret by executing confidentiality agreements with employees and others and by hiding the information from outsiders by means of fences safes encryption and other means of concealment so that the only way the secret can be unmasked is by a breach of contract or a tort 10 Whether information qualifies as a “trade secret” under federal or state law is a question of fact that may be determined by a jury 11 A jury may consider several factors in assessing whether certain material is a trade secret including the following       the extent to which the information is known outside of the company the extent to which it is known by employees and others involved in the company the extent of measures taken by the company to guard the secrecy of the information the value of the information to the company and to its competitors the amount of effort or money expended by the company in developing the information and the ease or difficulty with which the information could be properly acquired or duplicated by others 12 Eligible Subject Matter and Acquisition of Rights The U S Supreme Court has explained that for subject matter to be protected as a trade secret the material must meet minimal standards of novelty and inventiveness to avoid extending trade secret protection to matters of general or common knowledge in the industry in which it is used 13 8 Restatement First of Torts §757 comment b Uniform Trade Secrets Act §1 4 10 ConFold Pac v Polaris Indus 433 F 3d 952 959 7th Cir 2006 citations omitted 11 4-15 ROGER M MILGRIM MILGRIM ON TRADE SECRETS §15 01 12 Restatement First of Torts §757 comment b 13 Kewanee Oil Co v Bicron Corp 416 U S 470 476 1974 “ S ome novelty will be required if merely because that which does not possess novelty is usually known secrecy in the context of trade secrets thus implies at least minimal novelty ” see also Ruckelshaus v Monsanto Co 467 U S 986 1002 1984 “Information that is public knowledge or that is generally known in an industry cannot be a trade secret ” 9 Congressional Research Service 2 Protection of Trade Secrets Overview of Current Law and Legislation In addition the Supreme Court has held that a person can have a property interest in a trade secret protected by the Taking Clause of the Fifth Amendment although “ b ecause of the intangible nature of a trade secret the extent of the property right therein is defined by the extent to which the owner of the secret protects his interest from disclosure to others ”14 Therefore companies may acquire a protectable trade secret property right by putting into place reasonable measures to maintain the confidentiality of certain business information “that is sufficiently valuable to afford an actual or potential economic advantage over others ”15 This expansive standard means that trade secret protection could be available to a wide range of proprietary information and technologies that companies rely on to give them an economic advantage over their competitors including customer lists methods of production marketing strategies pricing information and chemical formulae Duration of Protection Trade secret protection may extend indefinitely lasting as long as the subject matter of the trade secret is commercially valuable and is kept confidential 16 However the trade secret status of information may be lost if the information is accidentally or intentionally disclosed by anyone 17 Once a trade secret has been exposed to the public its protected character is lost and cannot later be retrieved 18 However disclosures of trade secrets to third parties for certain limited reasons do not waive trade secret protections so long as the trade secret owner took reasonable measures to maintain its secrecy before and during disclosure such as requiring non-disclosure or confidentiality agreements from each recipient of confidential information 19 Misappropriation Misappropriation of a trade secret is a tort that may occur in several ways One is when an individual acquires the trade secret through improper means such as theft bribery misrepresentation or espionage 20 Another is when the individual uses or discloses the trade secret through a breach of confidence For example an employee might switch jobs and then disclose his previous employer’s trade secrets in violation of a confidentiality agreement 21 Finally a trade secret may be misappropriated if it is used or disclosed with knowledge that the trade secret had been acquired improperly or through mistake A person who uses information that he knows to have been stolen by another is therefore also guilty of misappropriation 22 It is not a violation of trade secret law for another party to independently develop the subject matter of a trade secret or for a party to analyze publicly available products or information in order to discover the secret information 23 In addition “reverse engineering ” which involves 14 Ruckelshaus 467 U S at 1002 Restatement Third of Unfair Competition §39 16 United States v Dubilier Condenser Corp 289 U S 178 186 1933 explaining that rather than seek patent protection an inventor “may keep his invention secret and reap its fruits indefinitely ” 17 See Religious Tech Ctr v Netcom On-Line Communication Servs 923 F Supp 1231 1256 N D Cal 1995 18 In re Remington Arms Co 952 F 2d 1029 1033 8th Cir 1991 19 1-1 ROGER MILGRIM MILGRIM ON TRADE SECRETS §1 04 20 Restatement Third of Unfair Competition §40 1994 21 See Jennifer Brockett Protecting Intellectual Property During Layoffs 32 LOS ANGELES LAWYER April 2009 22 Restatement Third of Unfair Competition §40 1994 23 Id at §43 15 Congressional Research Service 3 Protection of Trade Secrets Overview of Current Law and Legislation “starting with the known product and working backward to divine the process which aided in its development or manufacture ” is not considered an improper means of acquiring the subject matter of another’s trade secret 24 Misappropriation of a trade secret may be enjoined by a court and the defendant may also be liable for compensatory and punitive damages 25 Trade Secrets As a Form of Intellectual Property Intellectual property encompasses a broad range of intangible property including the following four categories of subject matter 1 original artistic and literary works of authorship such as motion pictures books art photographs music and sound recordings protected by copyright law 2 symbols names colors sounds and words that distinguish commercially offered goods and services protected by trademark law 3 inventions of processes machines manufactures and compositions of matter that are useful new and nonobvious protected by patent law and 4 confidential and proprietary business information protected by trade secrets law Federal law grants certain exclusive rights to the owners of patents trademarks and copyrights and provides remedies in the event that those rights are violated an act referred to as an infringement 26 Owners of these three types of intellectual property may enforce their rights by bringing a lawsuit against an alleged infringer in federal court The U S Department of Justice may also criminally prosecute particularly egregious violators of the copyright and trademark laws27 in order to impose greater punishment and possibly deter other would-be violators The Patent Act only provides civil remedies in the event of patent infringement 28 In contrast to the other three types of intellectual property that are governed primarily by federal law trade secrets are primarily governed under state law 29 and thus owners of trade secrets have more limited legal recourse when their rights are violated by others State law provides trade secret owners with the power to file civil lawsuits against those who misappropriate trade secrets Federal law allows U S Attorneys to prosecute such offenders but does not currently give trade secret owners a private right of action in federal court against parties that have engaged in trade secret theft Purpose of Trade Secret Law and Comparison to Patent Law Trade secret law serves as the primary alternative to the patent system 30 granting inventors proprietary rights to particular technologies processes designs or formula that may not be able to satisfy the rigorous statutory standards for patentability Companies may choose to maintain an invention as a trade secret rather than obtain a patent because their trade secret rights are not 24 Kewanee Oil Co 416 U S at 476 Restatement Third of Unfair Competition §§44 45 26 For a comprehensive description see CRS Report RL34109 Intellectual Property Rights Violations Federal Civil Remedies and Criminal Penalties Related to Copyrights Trademarks and Patents by Brian T Yeh 27 For copyright 17 U S C §506 18 U S C §2319 for trademark 18 U S C §2320 28 35 U S C §281 29 The U S Supreme Court in Kewanee Oil Co v Bicron Corp 416 U S 470 1974 held that state trade secret laws are not preempted by either the Patent Clause of the U S Constitution Article I §8 cl 8 or the federal patent statute 35 U S C §§101 et seq Although both trade secret law and patent law protect certain kinds of information the two fields of law are distinct For a detailed comparison of patent law and trade secret law see CRS Report R41391 The Role of Trade Secrets in Innovation Policy by John R Thomas 30 ROGER E SCHECHTER JOHN R THOMAS INTELLECTUAL PROPERTY THE LAW OF COPYRIGHTS PATENTS AND TRADEMARKS §24 25 Congressional Research Service 4 Protection of Trade Secrets Overview of Current Law and Legislation restricted to a limited number of years—unlike patent protection which lasts less than 20 years and upon expiration thrusts the invention into the public domain In addition trade secret protection is far easier quicker and cheaper to obtain immediately receiving legal protection upon a company taking reasonable efforts to maintain the secrecy of valuable business information compared to the complicated lengthy and expensive process of acquiring a patent which can take several years and requires the involvement of a federal government agency the U S Patent Trademark Office However obtaining patent protection may be more appropriate in certain instances such as when a technology is difficult to maintain as a secret because competitors could easily reverse-engineer or independently discover it The U S Supreme Court has explained that the purpose of trade secret law is to provide companies with incentives to innovate and develop valuable information that may not be patentable Trade secret law will encourage invention in areas where patent law does not reach and will prompt the independent innovator to proceed with the discovery and exploitation of his invention Competition is fostered and the public is not deprived of the use of valuable if not quite patentable invention 31 In addition by establishing legal remedies for trade secret misappropriation trade secret law deters individuals who “have as their sole purpose and effect the redistribution of wealth from one firm to another ”32 Historical Development of Trade Secret Law Unlike other forms of intellectual property that can trace their origins back several hundreds of years trade secret law is a creation of state court opinions from the middle of the 19th century As noted by one legal scholar the principles of trade secret law evolved out of a series of related common law torts breach of confidence breach of confidential relationship common law misappropriation unfair competition unjust enrichment and torts related to trespass or unauthorized access to a plaintiff’s property It also evolved out of a series of legal rules—contract and common law—governing the employment relationship 33 In 1939 the American Law Institute ALI a group of lawyers judges and legal scholars published a treatise titled the “Restatement of Torts ” which was an effort to provide a “clear formulation of common law and its statutory elements or variations and reflect the law as it presently stands or might plausibly be stated by a court ”34 The Restatement of Torts included two sections dealing with the law of trade secrets Section 757 explained the subject matter of trade secrets while Section 758 spelled out the elements of a trade secret misappropriation cause of action The ALI later addressed trade secrets in sections 39-45 of its 1993 “Restatement Third of Unfair Competition ” In addition the National Conference of Commissioners on Uniform State Law NCCUSL issued the Uniform Trade Secrets Act UTSA in 1979 which represents “the first comprehensive effort 31 Kewanee Oil Co 416 U S at 484-85 Rockwell Graphic Systems Inc v DEV Industries Inc 925 F 2d 174 178 7th Cir 1991 33 Mark A Lemley The Surprising Virtues of Treating Trade Secrets as IP Rights 61 STANFORD L REV 311 316 2008 34 ALI Publications Catalog FAQ at http www ali org index cfm fuseaction publications faq 32 Congressional Research Service 5 Protection of Trade Secrets Overview of Current Law and Legislation to codify the law of trade secrets protection incorporating the major common law principles while filling gaps left by the courts ”35 The NCCUSL consists of a group of academics attorneys and judges who draft statutes addressing a variety of issues and then propose that each state enact them 36 However the NCCUSL lacks direct legislative authority itself Its uniform acts become law only to the extent that state legislatures choose to adopt them The federal government did not take steps to provide national trade secret protection until the mid-1990s when Congress enacted the Economic Espionage Act of 1996 This federal criminal law is described in detail in the following section Current Legal Landscape for Trade Secret Protection State Law As noted in the section above trade secrets primarily receive protection from misappropriation under state law Individuals or corporations may seek civil damages in state courts by pursuing a common law tort action for misappropriation or through a specific state statute The Uniform Trade Secrets Act UTSA codifies the basic principles of common law trade secret protection and has been adopted by 47 states and the District of Columbia 37 although many state legislatures made some changes to the original model text before enacting it These state laws provide definitions for the key terms “trade secret ” “misappropriation ” and “improper means ”38 and specify various forms of injunctive and monetary relief including compensatory damages punitive damages and attorney’s fees in a civil action for misappropriation of a trade secret 39 A few states even recognize the theft of trade secrets as a prosecutable crime 40 However according to a March 2016 Senate Judiciary Committee report state law variations from the UTSA have led to different procedural and substantive standards being applied by state courts in trade secret cases Although the differences between State laws and the UTSA are generally relatively minor they can prove case-dispositive they may affect which party has the burden of establishing that a trade secret is not readily ascertainable whether the owner has any rights against a party that innocently acquires a trade secret the scope of information protectable as a trade secret and what measures are necessary to satisfy the requirement that the owner employ “reasonable measures” to maintain secrecy of the information 41 35 NCCUSL Why States Should Adopt UTSA at http www uniformlaws org Narrative aspx title Why%20States%20Should%20Adopt%20UTSA 36 For more information about the NCCUSL see http www uniformlaws org 37 Only New York Massachusetts and North Carolina have not enacted the UTSA though they offer protection through a distinct statute or the common law 38 Uniform Trade Secrets Act §1 39 Restatement Third of Unfair Competition §§44 45 1994 40 For example California provides that anyone who acquires discloses or uses trade secrets without authorization shall be punished by imprisonment of up to one year in a county jail by a fine of up to $5 000 or by both penalties CAL PENAL CODE §499c In Texas the knowing theft of a trade secret carries a criminal sentence of at least two years imprisonment up to a maximum of 10 years and a fine of up to $10 000 TEX PENAL CODE §31 05 See also N J STAT ANN §2C 20-1 N Y PENAL LAW §165 07 41 S Rept 114-220 at 2-3 Congressional Research Service 6 Protection of Trade Secrets Overview of Current Law and Legislation Federal Law Trade Secrets Act Before 1996 arguably the most significant federal legislation regarding trade secrets was the Trade Secrets Act 42 This statute enacted in 1948 is actually of narrow applicability It forbids federal government employees and government contractors from making an unauthorized disclosure of confidential government information including trade secrets The sanctions for violating this criminal offense are removal from office or employment and a fine and or imprisonment of not more than one year The law does not apply to state or local government actors or to private sector employees Economic Espionage Act In 1996 Congress enacted a far broader piece of legislation pertaining to trade secrets the Economic Espionage Act of 1996 EEA 43 The legislative history of the EEA reveals the congressional concerns over growing international and domestic economic espionage against U S businesses that prompted the establishment of a more comprehensive federal scheme protecting trade secrets American companies and the U S Government spend billions on research and development The benefits reaped from these expenditures can easily come to nothing however if a competitor can simply steal the trade secrets without expending the development costs For years now there has been mounting evidence that many foreign nations and their corporations have been seeking to gain competitive advantage by stealing the trade secrets the intangible intellectual property of inventors in this country S ince the end of the cold war foreign nations have increasingly put their espionage resources to work trying to steal American economic secrets 44 The EEA defines two separate criminal offenses 1 theft of a trade secret for the benefit of a foreign entity economic espionage 18 U S C Section 1831 and 2 trade secret theft intended to confer an economic benefit to another party theft of trade secrets 18 U S C Section 1832 45 As a threshold matter to trigger an action under either provision of the EEA the information must qualify as a trade secret The EEA expansively defines a “trade secret” to encompass A ll forms and types of financial business scientific technical economic or engineering information including patterns plans compilations program devices formulas designs prototypes methods techniques processes procedures programs or codes whether tangible or intangible and whether or how stored compiled or memorialized physically electronically graphically photographically or in writing if— a the owner thereof has taken reasonable measures to keep such information secret and b the information derives independent economic value actual or potential from not being generally known to and not being readily ascertainable through proper means by the public 46 42 18 U S C §1905 P L 104-294 110 Stat 3488 1996 44 142 CONG REC S12207 S12208 daily ed October 2 1996 statement of Sen Specter 45 For a comprehensive description and analysis of all the statutory elements of the EEA see CRS Report R42681 Stealing Trade Secrets and Economic Espionage An Overview of 18 U S C 1831 and 1832 by Charles Doyle 46 18 U S C §1839 3 This definition is substantially similar to that used by the UTSA although it is broader in 43 Congressional Research Service 7 Protection of Trade Secrets Overview of Current Law and Legislation Economic Espionage The EEA’s “economic espionage” provision 18 U S C Section 1831 punishes those who misappropriate or attempt or conspire to misappropriate trade secrets with the intent or knowledge that the offense will benefit a foreign government instrumentality or agent 47 Such misappropriation must have been committed “knowingly” in other words the individual must have known that the information taken was valuable to its owner and that its owner had taken steps to keep it confidential 48 According to the legislative history of the EEA the “benefit” derived from a foreign espionage effort includes not only an economic benefit but also “reputational strategic or tactical benefit ”49 A “foreign instrumentality” includes any “entity that is substantially owned controlled sponsored commanded managed or dominated by a foreign government ”50 Therefore a foreign corporation that engages in espionage without any evidence of sponsorship or control from a foreign government may not be subjected to a Section 1831 prosecution However an individual or organization that engages in theft of trade secrets although not intending to benefit a foreign entity could be liable for violating the more general criminal trade secrets provision contained in Section 1832 described in the section below Theft of Trade Secrets The EEA’s “theft of trade secrets” prohibition 18 U S C Section 1832 is of more general application The principal elements of an EEA claim for theft of trade secrets are 1 the intentional and or knowing theft appropriation destruction alteration or duplication of 2 a trade secret related to a product or service used in or intended for use in interstate or foreign commerce 3 with intent to convert the trade secret and 4 intent or knowledge that such action will injure the owner 51 Scrutiny of these additional elements reveals several fundamental differences between Sections 1832 and 1831 First Section 1832 does not require that the offense benefit or intend to benefit a foreign entity it is a law of general applicability Section 1832 also requires that the theft economically benefit someone other than the trade secret owner whereas Section 1831 the foreign economic espionage provision more broadly encompasses misappropriation for any purpose including non-economic benefits such as “reputational strategic or tactical benefit s ”52 Establishing that the offender intended to cause injury to the trade secret owner “does not require coverage For a comparison of the language of the EEA and UTSA see James H A Pooley et al Understanding the Economic Espionage Act of 1996 5 TEX INTELL PROP L J 177 188-197 1997 47 18 U S C §1831 48 The legislative history of the EEA opined that this mens rea element of the offense would not be too difficult for government prosecutors to establish “Most companies go to considerable pains to protect their trade secrets Documents are marked proprietary security measures put in place and employees often sign confidentiality agreements to ensure that the theft of intangible information is prohibited in the same way that the theft of physical items are protected ” 142 CONG REC S12213 daily ed October 2 1996 Managers’ Statement for H R 3723 The Economic Espionage Bill 49 H R Rep No 104-788 at 11 1996 50 18 U S C §1839 1 51 18 U S C §1832 52 H R Rep No 104-788 at 11 1996 Congressional Research Service 8 Protection of Trade Secrets Overview of Current Law and Legislation the government to prove malice or evil intent but merely that the actor knew or was aware to a practical certainty that his conduct would cause some disadvantage to the rightful owner ”53 In 2014 an FBI assistant director testified before Congress about the logistical difficulties of bringing a prosecution under Section 1831 compared to Section 1832 Often the greatest challenge in prosecuting economic espionage as opposed to trade secret theft is being able to prove that the theft was intended to benefit a foreign government or foreign instrumentality The beneficiary of the stolen trade secrets may be traced to an overseas entity but obtaining evidence that proves the entity’s relationship with a foreign government can be difficult The decision to pursue these cases under Section 1832 theft of trade secrets instead of Section 1831 economic espionage may depend upon the availability of foreign evidence and witnesses diplomatic concerns and the presence of classified or sensitive information required to prove the foreign nexus element 54 Authorized Penalties Under the EEA The EEA authorizes substantial criminal fines and imprisonment penalties for economic espionage and theft of trade secrets For economic espionage the maximum penalties increase to $5 million for individuals and imprisonment of 15 years 55 in the case of corporations that are found guilty of this offense the applicable maximum fine is the greater of a $10 million or b three times the value of the stolen trade secret 56 Theft of trade secrets for commercial advantage is punishable by a fine of up to $250 000 for individuals as well as imprisonment of up to 10 years whereas organizations can be fined up to $5 million 57 The EEA also authorizes the criminal or civil forfeiture of “any property used or intended to be used to commit or facilitate” an EEA violation as well as “any property constituting or derived from any proceeds obtained directly or indirectly as a result of” an EEA offense 58 Offenders must also pay victims of trade secret theft restitution 59 In addition during any prosecution or proceeding under the EEA federal district courts are required to enter protective orders or to take other measures “as may be necessary and appropriate to preserve the confidentiality of trade secrets consistent with the requirements of the Federal Rules of Criminal and Civil Procedure the Federal Rules of Evidence and all other applicable laws ”60 The legislative history of the EEA reveals the congressional interest in ensuring that courts use protective orders to guard against trade secret disclosures We have been deeply concerned about the efforts taken by courts to protect the confidentiality of a trade secret It is important that in the early stages of a prosecution the issue whether material is a trade secret not be litigated Rather courts should when entering these orders always assume that the material at issue is in fact a trade secret 61 53 Id at 11-12 Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 statement of Randall C Coleman Assistant Director Counterintelligence Division FBI 55 18 U S C §1831 56 18 U S C §1831 57 18 U S C §1832 58 18 U S C §§1834 2323 59 Id 60 18 U S C §1835 61 142 CONG REC S12213 daily ed October 2 1996 Managers’ Statement for H R 3723 The Economic Espionage 54 Congressional Research Service 9 Protection of Trade Secrets Overview of Current Law and Legislation The EEA also allows the Attorney General to bring a civil action to obtain “appropriate injunctive relief” against any violation of the EEA provisions regarding the protection of trade secrets 62 However the EEA does not provide victims of trade secret theft with a private civil cause of action 63 Extraterritorial Application of the EEA Trade secret violations that occur both domestically and outside the United States may be subject to criminal prosecution by the federal government under the EEA The U S Supreme Court has said on a number of occasions that “ i t is a longstanding principle of American law ‘that legislation of Congress unless a contrary intent appears is meant to apply only within the territorial jurisdiction of the United States’”64 With this in mind Congress specifically identified the circumstances under which it intended the economic espionage and theft of trade secrets provisions of the EEA to apply overseas 65 Either offense may be prosecuted if 1 the offender is a U S citizen or permanent resident alien or an organization organized under U S law or 2 an act in furtherance of the offense is committed within the United States 66 Statutory Exceptions to EEA Prohibitions The EEA provides two express exceptions to the conduct that it prohibits 1 any otherwise lawful activity conducted by a governmental entity of the United States a state or a political subdivision of a state or 2 the reporting of a suspected violation of law to any governmental entity of the United States a state or a political subdivision of a state if such entity has lawful authority with respect to that violation 67 The first exception permits the government to conduct an otherwise lawful “investigative protective or intelligence activity” with respect to the trade secret 68 The second exception allows for the reporting of suspected criminal activity to law enforcement 69 Bill 62 18 U S C §1836 63 See Barnes v J C Penney Co 2004 U S Dist LEXIS 17557 10 N D Tex 2004 explaining that “ t his criminal law provision 18 U S C §1832 does not create a private cause of action Any decision regarding prosecution under this provision is vested in the sole discretion of the United States Department of Justice and Plaintiff has no standing to seek relief under its terms ” 64 Morrison v National Australia Bank Ltd 130 S Ct 2869 2877 2010 quoting EEOC v Arabian American Oil Co 499 U S 244 248 1991 and Foley Bros Inc v Filardo 336 U S 281 1949 See generally CRS Report 94-166 Extraterritorial Application of American Criminal Law by Charles Doyle 65 H Rept 104-788 at 14 1996 66 18 U S C §1837 This broad grant of extraterritorial authority may raise enforcement problems if an act of economic espionage does not have any connection with the United States For example it has been suggested that “if a United States citizen residing abroad steals a Russian trade secret on behalf of the Chinese government that act is a violation of the EEA ” James H A Pooley et al Understanding the Economic Espionage Act of 1996 5 TEX INTELL PROP L J 177 204 1997 Yet the Department of Justice would likely not bring an action under the EEA for this violation “both to conserve its resources and to avoid the danger of intervening in what is essentially an internal dispute in a foreign country ” Id 67 18 U S C §1833 68 H R Rep No 104-788 at 14 1996 69 Id Congressional Research Service 10 Protection of Trade Secrets Overview of Current Law and Legislation Non-Preemption of Other Federal and State Laws While the EEA was enacted in part due to the apparent shortcomings of other federal laws concerning the protection of trade secrets the EEA expressly states that the act does not preempt or displace any other civil or criminal remedies provided by other federal or state laws for the misappropriation of a trade secret 70 Federal prosecutors thus may bring criminal charges under the following laws in addition to or instead of the EEA assuming that the conduct involved in the EEA violation also violates these federal criminal statutes 1 the Computer Fraud and Abuse Act 71 which penalizes anyone who accesses certain computers without authorization or in excess of authorization with the intent to defraud 2 the National Stolen Property Act NSPA 72 which prohibits the interstate transportation of tangible stolen “goods wares or merchandise ” or the knowing receipt of such property and 3 the federal wire fraud statute 73 which makes it illegal to use wire radio or television communications for purposes of executing a scheme to defraud International Law The United States offers a more sophisticated and robust legal regime protecting trade secrets than most other countries It has been noted that Much of the rest of the world has very weak laws or enforcement practices with the issue particularly acute in many of the largest emerging economies such as China Brazil Russia and India Thus as supply chains and operations expand globally a company’s ability to protect its trade secrets may be significantly diminished by weak rule of law and ineffective or non-existent enforcement in a number of countries 74 There is no international treaty specifically pertaining to the protection of trade secrets However one of the agreements reached during the Uruguay Round of Multilateral Trade Negotiations that concluded with the signing of the Marrakesh Agreement Establishing the World Trade Organization WTO 75 was the Agreement on Trade-Related Aspects of Intellectual Property Rights TRIPS TRIPS establishes minimum standards of protection for patents copyrights trademarks and trade secrets that each WTO signatory state must give to the intellectual property of fellow WTO members 76 Compliance with TRIPS is a prerequisite for WTO membership 70 18 U S C §1838 18 U S C §1030 a 4 e 2 For more information about this statute see CRS Report 97-1025 Cybercrime An Overview of the Federal Computer Fraud and Abuse Statute and Related Federal Criminal Laws by Charles Doyle 72 18 U S C §§2314 2315 The NSPA has been interpreted by the federal courts to exclude the theft of intangible intellectual property See United States v Aleynikov 676 F 3d 71 77-78 2d Cir 2012 “Some tangible property must be taken from the owner for there to be deemed a ‘good’ that is ‘stolen’ for purposes of the NSPA T he theft and subsequent interstate transmission of purely intangible property is beyond the scope of the NSPA ” United States v Agrawal 726 F 3d 235 252 2d Cir 2013 “ A defendant such as Agrawal who steals papers on which intangible intellectual property is reproduced does assume physical control over something tangible as is necessary for the item to be a ‘good’ for purposes of the NSPA ” internal quotations and citations omitted 73 18 U S C §1343 For more information about this statute see CRS Report R41930 Mail and Wire Fraud A Brief Overview of Federal Criminal Law by Charles Doyle 74 George Washington University Homeland Security Policy Institute Economic Espionage and Trade Secret Theft An Overview of the Legal Landscape and Policy Response at 5 September 2013 available at http homelandsecurity gwu edu sites homelandsecurity gwu edu files downloads Covington_SpecialIssueBrief pdf 75 For more information about the WTO see CRS Report RS22154 World Trade Organization WTO Decisions and Their Effect in U S Law by Jane M Smith Brandon J Murrill and Daniel T Shedd 76 World Trade Organization Understanding the WTO - Intellectual Property Protection and Enforcement at http www wto org english thewto_e whatis_e tif_e agrm7_e htm 71 Congressional Research Service 11 Protection of Trade Secrets Overview of Current Law and Legislation TRIPS does not explicitly refer to “trade secrets ” However in order to “ensur e effective protection against unfair competition ”77 TRIPS does refer to “protection of undisclosed information” and uses a definition that is similar to that of the traditional trade secret definition described above Article 39 of TRIPS obliges WTO members to protect individuals and corporations78 who own or control “undisclosed information” from unauthorized disclosure acquisition or use “without their consent in a manner contrary to honest commercial practices ”79 A footnote defines “a manner contrary to honest commercial practices” to mean “practices such as breach of contract breach of confidence and inducement to breach and includes the acquisition of undisclosed information by third parties who knew or were grossly negligent in failing to know that such practices were involved in the acquisition ”80 Article 39 also defines “undisclosed information” as information that 1 “is secret in the sense that it is not as a body or in the precise configuration and assembly of its components generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question 2 has commercial value because it is secret and 3 has been subject to reasonable steps under the circumstances by the person lawfully in control of the information to keep it secret ”81 Note that unlike the federal Economic Espionage Act that provides an extensive list of the various types of information that may be considered a trade secret Article 39 lacks such specificity and thus the term “information” could be subject to broad or narrow interpretation by WTO members In addition recent testimony before Congress criticized the vagueness of the protection mandated by Article 39 The heart of the relevant clause in TRIPS is vague it asks whether the trade secret has been acquired or used “in a manner contrary to honest commercial practices ” As a result in Europe alone trade secret law which to date is not yet controlled by a European Union Directive is a patchwork of different forms of protection What is contrary to honest commercial practices in one country may be considered acceptable in other countries 82 Nevertheless Article 39 of TRIPS is the first time that protection of trade secrets has appeared in a multilateral treaty 83 According to a legal commentator the “TRIPS Agreement includes a requirement that member nations enact trade secret law that is very similar to U S trade secret law This is significant in light of the fact that trade secret law either did not exist or was undeveloped in many countries prior to the TRIPS Agreement ”84 77 TRIPS Agreement art 39 para 1 available at http www wto org english docs_e legal_e 27-trips_04d_e htm#7 The TRIPS Agreement refers to “individuals and corporations” as “natural and legal persons ” 79 TRIPS Agreement art 39 para 2 80 Id n 10 81 Id art 39 para 2 82 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 statement of David M Simon Senior Vice President salesforce com Inc 83 Francois Dessemontet Arbitration and Confidentiality 7 AM REV INT'L ARB 299 307 1996 84 Andrew Beckerman-Rodau Patent Law - Balancing Profit Maximization and Public Access to Technology 4 COLUM SCI TECH L REV 1 20 n 108 2002 78 Congressional Research Service 12 Protection of Trade Secrets Overview of Current Law and Legislation The WTO has the power to resolve disputes between member states for alleged violations of the TRIPS Agreement including its provisions governing “undisclosed information ” However such cases appear to be very rare a search of the WTO’s dispute cases revealed that a complaint involving Article 39 has occurred only once and that case was eventually withdrawn after the parties China and the European Communities reached an agreement in the form of a Memorandum of Understanding 85 In May 2014 Senator Schumer sent a letter to the U S Trade Representative USTR Michael Froman urging him to “initiate a case at the World Trade Organization WTO against China for state-backed cyber espionage against American businesses and workers ”86 The letter argues that Chinese policies that sanction cyber espionage are in clear violation of the TRIPS agreement that obliges WTO members to protect trade secrets 87 As of the date of this report the USTR has not filed a WTO complaint against China over this matter 88 The United States has entered into numerous bilateral and multilateral free trade agreements FTAs that require their signatories to provide higher levels of intellectual property protection than are required under the TRIPS Agreement These intellectual property obligations exceed those of the TRIPS Agreement and are commonly referred to as “TRIPS-plus agreements ” The United States has for many years pursued a policy of encouraging its trading partners to adopt TRIPS-plus provisions which include more robust protections for trade secrets Negotiating the inclusion of trade secret protection as part of these FTAs is discussed later in this report The Growing Problem of Trade Secret Theft and Economic Espionage Measuring Economic Loss It is difficult to determine the total value of trade secrets to U S businesses although a report issued by the U S Chamber of Commerce stated that “ p ublicly traded U S companies own an estimated $5 trillion worth of trade secrets ”89 A recent study by PricewaterhouseCoopers PwC and the Center for Responsible Enterprise and Trade CREATe org suggested that the economic loss attributable to trade secret theft is between 1% to 3% of U S Gross Domestic Product 90 A more precise calculation of the economic impact of trade secret theft is impeded by several factors identified by the Office of the National Counterintelligence Executive ONCIX 1 A company may not realize that its sensitive information has been stolen until years after the crime 85 WTO Dispute Settlement DS372 available at http www wto org english tratop_e dispu_e cases_e ds372_e htm Senator Schumer Press Release Schumer Calls on U S Trade Rep to File WTO Suit in Response to Chinese CyberAttacks May 22 2014 available at http www schumer senate gov Newsroom record cfm id 351779 87 Id 88 For more information on this topic see CRS Report IN10079 Alleged Chinese Government Cyber Theft of U S Commercial Trade Secrets by Wayne M Morrison Susan V Lawrence and John W Rollins 89 U S Chamber of Commerce The Case for Enhanced Protection of Trade Secrets in the Trans-Pacific Partnership Agreement at 10 available at https www uschamber com sites default files legacy international files Final%20TPP%20Trade%20Secrets%208_0 pdf 90 PwC CREATe org Economic Impact of Trade Secret Theft A Framework for Companies to Safeguard Trade Secrets and Mitigate Potential Threats at 3 February 2014 available at http www pwc com en_US us forensicservices publications assets economic-impact pdf 86 Congressional Research Service 13 Protection of Trade Secrets Overview of Current Law and Legislation 2 Reporting security breaches to the FBI or other law enforcement entity could harm the company’s reputation and stock prices or damage its corporate relationships 3 Publicly accusing a foreign government or business competitor of trade secret theft carries the risk of offending the company’s potential customers or business partners 4 It may be very difficult if not impossible to measure the monetary value of some forms of sensitive information 91 ONCIX further opined that the “ e stimates from academic literature on the losses from economic espionage range so widely as to be meaningless—from $2 billion to $400 billion or more a year—reflecting the scarcity of data and the variety of methods used to calculate losses ”92 Types of Offenders Domestic In the vast majority over 90% of trade secret cases that are litigated in state court the alleged misappropriator is someone the trade secret owner knows either a current or former employee or a business partner 93 Given this statistic it has been suggested that “a prudent trade secret owner should focus its efforts in large part on protecting trade secrets from unscrupulous employees and to a somewhat lesser extent business partners ”94 Foreign In its October 2011 report to Congress ONCIX warned that “ b ecause the United States is a leader in the development of new technologies and a central player in global finance and trade networks foreign attempts to collect US technological and economic information will continue at a high level and will represent a growing and persistent threat to US economic security ”95 ONCIX raised particular concerns about the use of the Internet computer technologies and mobile communication devices to steal the trade secrets of U S businesses N early all business records research results and other sensitive economic or technologyrelated information now exist primarily in digital form Cyberspace makes it possible for foreign collectors to gather enormous quantities of information quickly and with little risk whether via remote exploitation of victims’ computer networks downloads of data to external media devices or e-mail messages transmitting sensitive information 96 91 Office of the National Counterintelligence Executive Foreign Spies Stealing US Economic Secrets in Cyberspace October 2011 at 3 92 Id at 4 93 David S Almeling et al A Statistical Analysis of Trade Secret Litigation in State Courts 46 GONZAGA L REV 57 68 2010 94 Id 95 Office of the National Counterintelligence Executive Foreign Spies Stealing US Economic Secrets in Cyberspace October 2011 at i available at http www ncix gov publications reports fecie_all Foreign_Economic_Collection_2011 pdf 96 Id at iii Congressional Research Service 14 Protection of Trade Secrets Overview of Current Law and Legislation While cyber-enabled methods of trade secret theft are getting increased attention from the federal government 97 it is important to realize that many actors foreign intelligence services corporate competitors transnational criminal organizations “still rely on physical means such as recruitment of insiders and placement of agents within companies for purposes of stealing critical data ”98 The motivation for trade secret theft varies with some perpetrators “seek ing personal financial gain while others hope to advance national interests or political and social causes ”99 According to ONCIX the governments of China and Russia are particularly “aggressive and capable collectors of sensitive U S economic information and technologies ” and “Chinese actors are the world’s most active and persistent perpetrators of economic espionage ”100 The U S International Trade Commission USITC released a report indicating that U S firms lost approximately $1 1 billion in the year 2009 due to Chinese trade secret misappropriation 101 Between January 2009 and January 2013 China was involved in 17 criminal prosecutions out of a total of 20 that the U S Department of Justice brought pursuant to the EEA 102 Enforcement of Trade Secret Rights Litigation and Prosecution At the state level enforcement of trade secret laws is generally the responsibility of the trade secret owner by filing a civil suit in state court against an individual or organization alleged to have misappropriated the trade secret in order to obtain remedies such as injunctive relief and compensatory and punitive damages 103 In addition as discussed above a few states have enacted criminal laws against trade secret theft under which state prosecutors may bring criminal charges against defendants in trade secret cases At the federal level the Economic Espionage Unit located within the Federal Bureau of Investigation’s FBI’s Counterintelligence Division has primary responsibility for investigating offenses under the EEA 104 The U S Department of Justice DOJ and its U S Attorneys have the power to prosecute cases involving corporate and state-sponsored trade secret theft 105 The 97 See e g CRS Report IN10079 Alleged Chinese Government Cyber Theft of U S Commercial Trade Secrets by Wayne M Morrison Susan V Lawrence and John W Rollins 98 PwC CREATe org Economic Impact of Trade Secret Theft A Framework for Companies to Safeguard Trade Secrets and Mitigate Potential Threats at 4 99 Id at 10 100 Office of the National Counterintelligence Executive Foreign Spies Stealing US Economic Secrets in Cyberspace October 2011 at i-ii 101 USITC China Effects of Intellectual Property Infringement and Indigenous Innovation Policies on the U S Economy Investigation no 332-519 USITC Publication 4226 May 2011 3-42 available at http www usitc gov publications 332 pub4226 pdf 102 Executive Office of the President Administration Strategy on Mitigating the Theft of U S Trade Secrets February 2013 at 23-31 available at http www whitehouse gov sites default files omb IPEC admin_strategy_on_mitigating_the_theft_of_u s _trade_secrets pdf 103 ROGER E SCHECHTER JOHN R THOMAS INTELLECTUAL PROPERTY THE LAW OF COPYRIGHTS PATENTS AND TRADEMARKS §24 4 104 Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 statement of Randall C Coleman Assistant Director Counterintelligence Division FBI 105 The 93 U S Attorneys’ Offices located across the United States and its territories have primary responsibility for prosecution of intellectual property offenses Every office has at least one Computer Hacking and Intellectual Property Congressional Research Service 15 Protection of Trade Secrets Overview of Current Law and Legislation Attorney General is also authorized by the EEA to bring a civil action in federal court to obtain “appropriate injunctive relief” against any violation of the EEA 106 However as discussed in detail later in this report federal law does not currently provide a private federal cause of action for trade secret misappropriation Executive Branch Actions Administration Strategy In February 2013 the White House issued a report The Administration Strategy on Mitigating the Theft of U S Trade Secrets which describes its plan for “vigorously combat ing the theft of U S trade secrets that could be used by foreign companies or foreign governments to gain an unfair economic edge ”107 The report noted that the theft of valuable U S trade secrets has several negative consequences including the loss of U S companies’ intellectual property the harm to American business innovation and global competitiveness damage to national and economic security possible reduction of U S exports and the increased risk of American job losses 108 The report contains five “strategy action items” that are intended to provide a “means for improved coordination within the U S government” to protect the integrity of trade secrets 109 1 Focusing diplomatic efforts and pressure on other countries to protect trade secrets and discourage their theft including through the U S Trade Representative or USTR seeking provisions in bilateral regional and multilateral trade agreements110 that require parties to establish remedies for trade secret theft similar to those provided for in U S law 2 Promoting the development and adoption of voluntary best practices by private industry to protect trade secrets 3 Enhancing domestic law enforcement operations by having the FBI and DOJ prioritize trade secret theft investigations and prosecutions as well as having the Office of the Director of National Intelligence share information with the private sector about potential foreign espionage threats 4 Improving domestic legislation to ensure that federal laws are effective in protecting trade secrets and 5 Conducting education and outreach efforts to raise public awareness of the detrimental effects of trade secret theft CHIP Coordinator who are Assistant U S Attorneys with expertise in prosecuting IP and computer crimes U S Dep’t of Justice Computer Crime Intellectual Property Section Prosecuting Intellectual Property Crimes 4th ed 2013 available at http www justice gov criminal cybercrime docs prosecuting_ip_crimes_manual_2013 pdf 106 18 U S C §1836 107 Executive Office of the President Administration Strategy on Mitigating the Theft of U S Trade Secrets February 2013 at 1-2 108 Id at 1 109 Id at 2 110 For a comprehensive explanation of how the federal government may promote the protection of U S intellectual property through its international trade policy see CRS Report RL34292 Intellectual Property Rights and International Trade by Shayerah Ilias Akhtar and Ian F Fergusson Congressional Research Service 16 Protection of Trade Secrets Overview of Current Law and Legislation Special 301 The USTR is required111 to conduct an annual review of foreign countries’ intellectual property policies and practices and to publish a “Special 301” Report that identifies countries that lack adequate and effective intellectual property protection and enforcement regimes The 2013 Special 301 Report was the first time that the USTR included a section dedicated to “the growing problem of misappropriation of trade secrets in China and elsewhere ”112 The Report “urge d its trading partners to ensure that they have robust systems for protecting trade secrets including deterrent penalties for criminal trade secret theft” and promised that the “USTR will monitor developments in this area ”113 In a 2014 congressional hearing a witness described the negative consequences of overseas trade secret theft as follows “Inadequate protection of trade secrets abroad harms not only companies whose property is stolen but also the country where the theft occurs because companies are then less likely to form joint ventures and make high-value global supply chain investments in those countries ”114 Free Trade Agreements TPP and TTIP Currently the USTR is seeking to improve trade secret protection in countries with which it has been negotiating two free trade agreements 1 the Trans-Pacific Partnership TPP 115 which involves 11 countries in the Asia-Pacific region and 2 the Transatlantic Trade and Investment Partnership TTIP 116 with the European Union The U S Chamber of Commerce has argued that the legal regimes of TPP countries need significant improvement in the area of trade secret protection Some TPP countries such as Canada Australia Malaysia and Singapore have no laws criminalizing traditional trade secret disclosure or misappropriation Among those countries that do criminalize trade secret misappropriation or disclosure the penalties often vary from those that would not provide sufficient deterrent effect to those that would but only if applied consistently The low criminal penalties or lack thereof in some TPP jurisdictions are particularly troublesome as criminal penalties are believed to provide a greater deterrent to the would-be trade secret thief than the prospect of a civil penalty alone 117 Such variation in trade secret protection is also present in the TTIP negotiations as the European Union currently lacks a consistent harmonized legal system governing trade secret protection 111 P L 93-618 as amended by P L 100-418 USTR 2013 Special 301 Report at 4 May 2013 available at http www ustr gov sites default files 05012013%202013%20Special%20301%20Report pdf 113 Id at 13 114 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 statement of Thaddeus Burns Senior Counsel General Electric on behalf of the Intellectual Property Owners Association 115 For more information on the TPP and intellectual property rights see CRS Report R42694 The Trans-Pacific Partnership TPP Negotiations and Issues for Congress coordinated by Ian F Fergusson 116 For more information on the TTIP and intellectual property rights see CRS Report R43387 Transatlantic Trade and Investment Partnership T-TIP Negotiations by Shayerah Ilias Akhtar Vivian C Jones and Renée Johnson 117 U S Chamber of Commerce The Case for Enhanced Protection of Trade Secrets in the Trans-Pacific Partnership Agreement at 23 112 Congressional Research Service 17 Protection of Trade Secrets Overview of Current Law and Legislation instead there are disparities across the 27 EU Member States in “what trade secrets can be protected in what circumstances and what the courts can or will do ”118 Limitations of Current Law and Proposed Changes It has been argued that “federal law has not kept pace with the technological innovation that has enabled increased trade secret theft ”119 The lack of a federal civil cause of action for trade secret misappropriation is perhaps the most widely cited deficiency in U S trade secret law As one legal practitioner has argued Unfortunately the EEA has not deterred trade secret theft and foreign economic espionage The Computer Crime and Intellectual Property Section of the United States Department of Justice has done an excellent job but the burden on the government is too great Without a federal civil cause of action U S companies cannot adequately protect U S trade secret assets in a worldwide economy that now crosses international boundaries 120 Another problem companies have encountered in having only federal criminal statutes protecting trade secrets is that “criminal law punishes the defendant but the process for compensating the victim is unwieldy particularly when compared to relief available under civil law ”121 Others have highlighted the limitations of the EEA’s extraterritorial application noting that “prosecutors lack enforcement and proper service mechanisms against individuals and entities located outside the United States Prosecutors cannot charge alleged violators of the EEA until they cross U S borders ”122 Reportedly since the enactment of the EEA in 1996 there have been relatively few cases prosecuted under the law approximately 125 indictments123 and 10 convictions 124 In Support of a Federal Civil Cause of Action for Trade Secret Theft Some observers have urged Congress to adopt a comprehensive federal trade secret law in order to promote uniformity in trade secret law throughout the United States 125 Supporters of such 118 Robert Anderson Sarah Turner Report on Trade Secrets for the European Commission January 2012 at 44 available at http ec europa eu internal_market iprenforcement docs trade-secrets 120113_study_en pdf 119 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 statement of Thaddeus Burns Senior Counsel General Electric on behalf of the Intellectual Property Owners Association 120 R Mark Halligan Protecting U S Trade Secret Assets in the 21st Century 6 1 LANDSLIDE September October 2013 available at http www americanbar org publications landslide 2013-14 september-october-2013 protecting_us_trade_secret_assets_the_21st_century html 121 Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 statement of Douglas K Norman Vice President General Patent Counsel Eli Lilly and Company 122 The Report of the Commission on the Theft of American Intellectual Property at 42 May 2013 123 Can You Keep a Secret THE ECONOMIST March 16 2013 124 Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 statement of Randall C Coleman Assistant Director Counterintelligence Division FBI see also News Release Senator Coons Hatch Introduce Bill to Combat Theft of Trade Secrets and Protect Jobs April 29 2014 at http www coons senate gov newsroom releases release senators-coons-hatch-introduce-bill-to-combat-theft-of-trade-secrets-and-protect-jobs “Current federal criminal law is insufficient Although the Economic Espionage Act of 1996 made trade secret theft a crime the Department of Justice brought only 25 trade secret theft cases last year ” 125 See e g Marina Lao Federalizing Trade Secrets Law in an Information Economy 59 OHIO STATE L J 1633 Congressional Research Service 18 Protection of Trade Secrets Overview of Current Law and Legislation legislation have argued that a federal trade secrets law would create procedural and substantive standards for the trade secret misappropriation offense on a uniform nationwide basis in response to the current situation of state trade secret laws in which there are “fundamental differences about what constitutes a trade secret what is required to misappropriate it and what remedies are available” due to state-by-state variations in statutory text and state court interpretations 126 In addition Senator Coons has observed that in contrast to state courts “ f ederal courts are better suited to working across state and national boundaries to facilitate discovery serve defendants or witnesses or prevent a party from leaving the country ”127 Representative Nadler has also asserted that the limitations of state trade secret law are impediments to the effective protection of U S corporate trade secrets in a global economy While this system of state law remedies appears to have worked relatively well for local and intrastate disputes it has not proven efficient or effective for trade secret theft incidents that cross state and sometimes international borders A fifty-state system does not work well in our increasingly mobile and globally interconnected world Former employees and industrial spies are likely to carry or transfer secret information across state borders or overseas The limited jurisdiction of the state court system makes it more difficult to obtain discovery or to act quickly enough to enforce an order that might stop the immediate loss of company secrets 128 Some commentators argue that trade secrets deserve to receive the same robust legal protections available to the three other types of intellectual property 129 For example owners of patents copyright and trademarks have the right to file a lawsuit against infringers in federal court to recover damages and possibly to enjoin further infringement and yet there is no similar right afforded to trade secret owners 130 despite the fact that trade secrets are often considered by many companies as their most valuable and important intellectual property asset 131 Instead at the federal level companies must rely on the federal government and its limited resources to enforce their trade secret rights 1998 Rebel J Pace The Case for a Federal Trade Secrets Act 8 HARVARD J OF LAW TECHNOLOGY 1995 126 David S Almeling Four Reasons to Enact a Federal Trade Secrets Act FORDHAM INTELLECTUAL PROPERTY MEDIA ENTERTAINMENT LAW JOURNAL XIX 3 2009 at 774 127 News Release Senators Coons Hatch Introduce Bill to Combat Theft of Trade Secrets and Protect Jobs April 29 2014 128 Press Release Rep Nadler on Protecting Trade Secrets of American Companies June 24 2014 available at http nadler house gov press-release rep-nadler-protecting-trade-secrets-american-companies 129 Id noting that U S law “already protect s trademarks copyrights and patents through federal civil remedies It is time to do the same for trade secrets ” Economic Espionage and Trade Secret Theft Are Our Laws Adequate for Today’s Threats Hearings Before the Senate Judiciary Comm Subcomm on Crime and Terrorism 113th Cong 2d Sess 2014 statement of Drew Greenblatt President and Owner Marlin Steel Wire Products “Despite their strategic economic importance trade secrets misappropriation is the only form of U S intellectual property violation for which the owner lacks access to federal court This leaves U S firms without a key tool to prevent trade secret theft and recover any losses ” 130 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 statement of Thaddeus Burns Senior Counsel General Electric on behalf of the Intellectual Property Owners Association 131 U S Chamber of Commerce The Case for Enhanced Protection of Trade Secrets in the Trans-Pacific Partnership Agreement at 10 see also David Kappos Trade Secrets Promise of Federal Protection Brings New Hope for Critical IP Law TheHill com June 30 2014 at http thehill com blogs congress-blog technology 210848-trade-secretspromise-of-federal-protection-brings-new-hope “Despite accounting for an average of two-thirds of U S companies’ information value trade secrets suffer from extremely limited recognition under federal law ” Congressional Research Service 19 Protection of Trade Secrets Overview of Current Law and Legislation Supporters of a federal civil remedy for trade secret misappropriation believe that Congress should empower federal courts to issue ex parte orders to seize stolen trade secrets in certain limited circumstances such as “to prevent an imminent misappropriation the dissemination of a stolen trade secret and to preserve evidence ”132 However they note that any legislation should contain proper safeguards to prevent abuse of the ex parte process “including damages in the event of wrongful seizure and protection of the information seized to protect against inappropriate access to the information ”133 Finally it has been asserted that “the United States has not consistently received cooperation from international jurisdictions in protecting trade secrets in part because it does not have its own federal civil statute to reference in encouraging the adoption and enforcement of similar legislation by its treaty partners ”134 In Opposition to a Federal Civil Trade Secret Remedy The establishment of a federal civil trade secret remedy has many proponents yet there have been some opposing views In 2007 the Trade Secrets Committee of the American Intellectual Property Law Association AIPLA issued a report that advised against federalizing trade secret law in part out of a concern that such action may create additional burdens and costs upon the federal judiciary The Committee believes that the problem of disparate state trade secret laws may have been overstated because the various state statutes share much in common especially those based upon the Uniform Trade Secrets Act UTSA Furthermore many trade secret cases are already heard in federal court through diversity or supplemental jurisdiction providing at least federal procedure if not substantive law benefits to private litigants Others have argued and the Committee agrees that the current state regulation of trade secrets although far from perfect is functioning adequately and that federalizing state trade secret law would therefore needlessly burden the already overworked federal judiciary 135 However AIPLA has since changed its position on this matter as revealed in an April 2013 letter to the U S Intellectual Property Enforcement Coordinator IPEC In response to the IPEC’s request for public comments for an administration legislative review related to economic espionage and trade secret theft the President of AIPLA wrote that because of the increase in foreign trade secret theft in recent years “AIPLA believes that the time has come to consider a federal civil remedy for international trade secret misappropriation ”136 Furthermore the AIPLA letter argued that “ a ny federal legislation should not preempt state trade secret laws but should 132 Trade Secrets Promoting and Protecting American Innovation Competitiveness and Market Access in Foreign Markets Hearings Before the House Judiciary Comm Subcomm on Courts Intellectual Property and Internet 113th Cong 2d Sess 2014 statement of Thaddeus Burns Senior Counsel General Electric on behalf of the Intellectual Property Owners Association 133 Id 134 Id 135 American Intellectual Property Law Association Report of the AIPLA Trade Secrets Committee 2007 at 2 available at http www2 aipla org MSTemplate cfm Section Proposal_to_Federalize_Trade_Secret_Law Site Trade_Secret_Law Template ContentManagement ContentDisplay cfm ContentID 7041 136 AIPLA Comments on Trade Secret Theft Strategy Legislative Review April 22 2013 at 2 available at http www aipla org advocacy executive Documents AIPLA%20Letter%20to%20IPEC%20on%20Trade%20Secrets%20-%204 22 13 pdf Congressional Research Service 20 Protection of Trade Secrets Overview of Current Law and Legislation instead complement them and should provide jurisdiction for civil actions involving claims involving the international theft of trade secrets ”137 A group of law school professors has urged Congress to reject the Defend Trade Secrets Act of 2015 DTSA discussed in detail in the following section of this report because they believe that the legislation which would establish a new private cause of action under the EEA “is likely to create new problems that could adversely impact domestic innovation increase the duration and cost of trade secret litigation and ultimately negatively affect economic growth ”138 The letter was authored or signed by professors who teach intellectual property law trade secret law innovation policy and information law throughout the United States In the view of these law professors the DTSA is not necessary and could even cause unintentional harm They argue that “ 1 it will not address the cyberespionage problem that is most often used to justify the adoption of a federal trade secret law 2 a federal trade secret law is not needed to protect U S trade secrets because there is already a robust set of state laws for the protection of such secrets and 3 there are significant costs to creating a federal civil cause of action for trade secret misappropriation ”139 An attorney who specializes in patent and trade secret litigation has identified two potential problems with the DTSA’s lack of a provision expressly preempting state trade secret laws 140 First the need for the DTSA stems in part from state-by-state variations in trade secret laws and the transactional and substantive problems that such variations impose The DTSA leaves those variations in place Worse the DTSA adds another law to the already cluttered landscape of 48 UTSA states with their variations two non-UTSA states the federal Economic Espionage Act and a federal common trade secret law Second the DTSA opens a backdoor to common-law and other causes of action that are precluded in most states The UTSA “displaces tort restitutionary and other laws…providing civil remedies for misappropriation of a trade secret ” The DTSA doesn’t displace anything Under the DTSA trade secret plaintiffs would have the option of pursuing their claim in state or federal court and if they choose federal court the additional option of asserting duplicative causes of actions that aren’t available in state courts 141 A legal commentator testified before Congress in December 2015 that legislation creating a federal civil trade secret remedy may increase the length and cost of trade secret litigation A s there is no federal civil trade secret jurisprudence numerous issues that have long been resolved at the state level are sure to be highly litigated at the federal level As the federal courts develop their jurisprudence they will have multiple sources of existing state law to borrow from but with no direction from Congress on which to choose … thereby leading to less uniformity in trade secret doctrine not more 142 137 Id at 3 Professors’ Letter in Opposition to the Defend Trade Secrets Act of 2015 S 1890 H R 3326 November 17 2015 available at https cyberlaw stanford edu files blogs 2015%20Professors%20Letter%20in%20Opposition%20to%20DTSA%20FINAL pdf 139 Id at 2 140 The DTSA has a “rule of construction” provision that expresses that Congress does not intend for the DTSA “to preempt any other provision of law ” S 1890 §2 f 141 David S Almeling Guest Post Defend Trade Secrets Act – A Primer an Endorsement and a Criticism Patently-O May 30 2014 at http patentlyo com patent 2014 05 secrets-endorsement-criticism html 142 Protecting Trade Secrets the Impact of Trade Secret Theft on American Competitiveness and Potential Solutions to 138 Congressional Research Service 21 Protection of Trade Secrets Overview of Current Law and Legislation Legislation in the 114th Congress The Defend Trade Secrets Act Two bills have been introduced in the 114th Congress related to trade secret misappropriation S 1890 and H R 3326 the Defend Trade Secrets Act DTSA of 2015 As introduced on July 29 2015 by Senator Hatch and Representative Doug Collins respectively the bills are substantively identical S 1890 has seen all the legislative activity to date On January 28 2016 the Senate Judiciary Committee by a unanimous voice vote reported S 1890 with an amendment in the nature of a substitute Senator Grassley filed a written report on March 7 2016 143 The Senate passed S 1890 by a vote of 87-0 on April 4 2016 On April 20 the House Judiciary Committee unanimously approved S 1890 by voice vote 144 The following summarizes the key provisions of the DTSA S 1890 as passed by the Senate and the House Judiciary Committee The DTSA would create a private cause of action in federal courts for trade secret owners to sue misappropriators The DTSA would establish this new private right by adding a subsection entitled “private civil actions” to the provision of the EEA that currently authorizes the Attorney General to bring a civil action to obtain “appropriate injunctive relief” against any violation of the EEA codified at 18 U S C Section 1836 The DTSA would allow an owner of a trade secret that is misappropriated to bring a civil action if the trade secret is related to a product or service used in or intended to be used in interstate or foreign commerce 145 The legislation would amend the EEA’s definition section 18 U S C Section 1839 to include definitions of the terms “misappropriation” and “improper means” that largely mirror the definitions in the Uniform Trade Secrets Act 146 The DTSA would provide a court with the power to issue civil ex parte orders “only in extraordinary circumstances ”147 for the “seizure of property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action ”148 According to the Senate Judiciary Committee report “ t he ex parte seizure provision is expected to be used in instances in which a defendant is seeking to flee the country or planning to disclose the trade secret to a third party immediately or is otherwise not amenable to the enforcement of the court’s orders ”149 To avoid potential abuse of these seizure orders the DTSA includes several detailed requirements that the court must follow before granting a seizure order including 1 a finding that immediate and irreparable injury will occur if the seizure is not ordered 2 the applicant for the seizure order is likely to succeed in showing that the information is a trade secret and that the person to whom the seizure is ordered misappropriated it by improper means 3 the harm to the applicant Remedy This Harm Hearings Before the Senate Judiciary Comm 114th Cong 1st Sess 2015 statement of Professor Sharon K Sandeen at 4-5 citation omitted 143 S Rept 114-220 144 Press Release Judiciary Committee Approves Bipartisan Trade Secrets Legislation April 20 2016 at https judiciary house gov press-release judiciary-committee-approves-bipartisan-trade-secrets-legislation 145 S 1890 §2 a adding new 18 U S C §1836 b 1 146 Id §2 b amending 18 U S C §1839 Note that the EEA’s definition section already includes an expansive definition of “trade secret” as well as “owner” includes a person or entity 147 As introduced S 1890 did not include this qualification The Senate Judiciary Committee adopted an amendment that added this language to the bill 148 S 1890 §2 a adding new 18 U S C §1836 b 2 A i 149 S Rept 114-220 at 6 Congressional Research Service 22 Protection of Trade Secrets Overview of Current Law and Legislation in denying the order outweighs the harm to the legitimate interests of the party against whom the seizure is ordered and substantially outweighs the harm to any third parties and 4 the matter to be seized would be destroyed moved hidden or otherwise rendered inaccessible if the party in possession of such property were given advance notice 150 In addition the DTSA requires that any seizure order must contain several elements including151 1 findings of fact and conclusions of law required for the order 2 the narrowest seizure of property necessary to protect the trade secret 3 a direction that the seizure be conducted in a manner that minimizes any interruption of the business operations of third parties and to the extent possible does not interrupt the legitimate business operations of the person accused of misappropriating the trade secret 4 a date for a hearing regarding the seizure order at the earliest possible time but not later than seven days after the order has issued unless the parties involved consent to another date 5 a requirement that the applicant provide a security that the court finds is adequate for the payment of damages that any person may be entitled to recover as a result of a wrongful or excessive seizure The DTSA would require the court to take custody of any seized materials and secure it from physical and electronic access 152 The DTSA provides a cause of action for any person who suffers damage by reason of a wrongful or excessive seizure the person is entitled to the same relief that is provided by the Trademark Act of 1946 15 U S C Section 1116 d 11 concerning the wrongful seizure of goods and counterfeit trademarks including damages for lost profits cost of materials loss of good will punitive damages and reasonable attorney’s fees 153 The DTSA would empower a court to offer civil remedies for trade secret misappropriation 154 including injunctive relief damages for actual loss and any unjust enrichment caused by the misappropriation of the trade secret or in lieu of damages measured by any other method an award of a reasonable royalty punitive damages of up to two times the amount of damages if the trade secret is willfully and maliciously misappropriated 155 and reasonable attorney’s fees if the claim of misappropriation is made in bad faith there is willful and malicious misappropriation or a motion to terminate an injunction is made or opposed in bad faith The DTSA would require evidence of actual or threatened misappropriation before a court may issue an injunction to prevent it 156 However such an order for injunctive relief may not “prevent a person from entering into an employment relationship” or “otherwise conflict with an applicable State law prohibiting restraints on the practice of a lawful profession trade or business ”157 In 150 Id §2 a adding new 18 U S C §1836 b 2 A ii Id §2 a adding new 18 U S C §1836 b 2 B 152 Id §2 a adding new 18 U S C §1836 b 2 D 153 Id §2 a adding new 18 U S C §1836 b 2 G 154 Id §2 a adding new 18 U S C §1836 b 3 155 As introduced S 1890 would have authorized an exemplary damage award of up to three times the amount of compensatory damages The Senate Judiciary Committee approved an amendment to the bill that limited punitive damages to two times compensatory damages 156 S 1890 §2 a adding new 18 U S C §1836 b 3 A i 157 Id §2 a adding new 18 U S C §1836 b 3 A i I II 151 Congressional Research Service 23 Protection of Trade Secrets Overview of Current Law and Legislation addition “conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows ”158 The DTSA would establish a three-year statute of limitations period for the misappropriation of trade secret civil action which is similar to that provided by the Uniform Trade Secrets Act and under most state laws 159 Finally the DTSA includes a “rule of construction” provision160 that declares that nothing in the DTSA shall be construed 1 to preempt any other provision of law or 2 to modify the EEA’s existing rule of construction codified at 18 U S C Section 1838 stating that the EEA does not preempt or displace any civil or criminal remedies provided by federal or state law for the misappropriation of a trade secret Author Information Brian T Yeh Legislative Attorney Disclaimer This document was prepared by the Congressional Research Service CRS CRS serves as nonpartisan shared staff to congressional committees and Members of Congress It operates solely at the behest of and under the direction of Congress Information in a CRS Report should not be relied upon for purposes other than public understanding of information that has been provided by CRS to Members of Congress in connection with CRS’s institutional role CRS Reports as a work of the United States Government are not subject to copyright protection in the United States Any CRS Report may be reproduced and distributed in its entirety without permission from CRS However as a CRS Report may include copyrighted images or material from a third party you may need to obtain the permission of the copyright holder if you wish to copy or otherwise use copyrighted material 158 Id §2 a adding new 18 U S C §1836 b 3 A i I These limitations were added to the bill by the Senate Judiciary Committee in response to concerns that the original language of the bill would have negatively impacted the ability of an employee to take new jobs with other companies See S Rept 114-220 at 8 159 As introduced S 1890 would have created a five-year limitations period The Senate Judiciary Committee approved an amendment to the bill that reduced the time period to three years 160 S 1890 §2 f Congressional Research Service R43714 · VERSION 7 · UPDATED 24