Copyright law best gauge of 'similarity' in dealing with trade secrets, Vanderbilt professor says as part of 2018 Distinguished Speaker Series at UH Law Center

Professor Joseph P. Fishman of Vanderbilt Law School takes a question from the audience about protections for trade secrets during his talk at the Law Center.

Professor Joseph P. Fishman of Vanderbilt Law School takes a question from the audience about protections for trade secrets during his talk at the Law Center.

March 21, 2018 — Trade secrets are sometimes perceived as the "red-headed stepchild" of the intellectual property world, but they deserve much more scrutiny, according to a Vanderbilt Law School professor who spoke Monday at the University of Houston Law Center.

Assistant Professor Joseph P. Fishman presented a work in progress coauthored with Georgia State Professor Deepa Varadarajan, "Similar Secrets," as part of the Spring 2018 Distinguished Speaker Series.

As with other forms of IP protections — patent, trademark and copyright law —trade secrecy struggles with the issue of how much similarity between a plaintiff's product and a defendant's product should be permissible, he said.

"All three protections are trying to protect innovation in different ways." he said.

Trade secret law has been "chugging along" for too long without a clear plan for dealing with similarity, he said, and is increasingly important as firms more and more often turn to trade secrecy law to protect their investments.

"As talent becomes more mobile, it has become a greater concern," he said. Employers who help develop a product or process, "can't forget what they learned, and you can't require a frontal lobotomy when they leave."

When a former employee or business partner develops a different product that derives in some way from a lawfully acquired trade secret, the definition of the term "use" under state and federal statutes "is the whole ballgame," he said.

Fishman maintained that copyright law provides the best guide for assessing similarity in trade secrecy. Copyright's notions of materiality and foreseeability could both provide limits for trade secret liability that judges have been interpreting with increasing breadth.

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