Trade Secrets/Unfair Competition/Noncompetes


[Video: Partner Stephanie Dutchess Trudeau describes a swift, successful non-compete outcome]

Within the ranks of Ulmer & Berne litigators and corporate attorneys are a select group who specialize in protecting clients’ major assets – their employees, their customers and their confidential and proprietary information. We protect clients in three ways:

  • First, we get to know our clients’ business and analyze the measures in place to protect their personnel and business from competitors. We work with clients to understand how competitive their industries are and whether the preventive measures they have in place are effective. We help clients to understand the legal meaning of “trade secret” and the prerequisites to protecting trade secrets from misappropriation by others. We also assist clients in understanding where the line between fair and unfair competition exists as the law in this area quickly evolves. We frequently counsel clients looking to recruit new employees to ensure that their recruiting efforts are undertaken with an eye toward those measures prohibited by law.
  • Second, we draft restrictive covenants and other agreements for clients. In some instances, our drafting is limited to revising existing agreements to clarify and strengthen the protections clients desire. In other circumstances, we are called upon to draft non-competition, non-solicitation and non-disclosure agreements in the first instance and to assist clients in rolling out such agreements in the workplace.
  • Third, we have significant experience in litigating lawsuits involving claims of unfair competition and trade secret misappropriation. Our attorneys regularly bring and defend such claims in federal and state courts, as well as in a number of arbitration forums throughout the country. Adept at gathering the necessary evidence and making the strategic decisions necessary to place the client in the best possible litigation posture, Ulmer & Berne attorneys work to secure injunctive relief and/or damages in cases where client’s business has been threatened and damaged.  We work closely with our clients throughout the lawsuit, helping them to understand the legal process and work tirelessly to achieve optimal results.

On Wednesday, May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (“DTSA”), which amends the Economic Espionage Act of 1996 and, most notably, creates a federal civil cause of action for trade secret misappropriation.  The DTSA received strong bipartisan support, passing unanimously in the...

On April 27, 2016, the U.S. House of Representatives passed, almost unanimously – 410 to 2 – the “Defend Trade Secrets Act of 2016” (“DTSA”). The DTSA was previously approved by the U.S. Senate, and now heads to President Obama’s desk for signature. The President has praised DTSA and is expected...

[View Video] Tapping its pipeline of trial-tested litigators, Ulmer & Berne is announcing that three accomplished partners will lead the firm’s respected Business Litigation Practice Group. Cleveland-based partners Jeffrey S. Dunlap and Paul R. Harris will serve as Co-Chairs alongside Cincinnati-based partner Robin D. Miller, who will act as Vice...

Ulmer & Berne LLP was named 2014 Ohio Firm of the Year by Benchmark Litigation at the second annual Benchmark Litigation US Awards held at the Essex Hotel in New York City on January 29, 2014. The US Benchmark Awards were based on a six-month research period involving extensive interviews...

Representative Experience

 Manufacturing

  • Successfully secured a preliminary injunction against the former owner, majority shareholder and seller of a business who had executed a non-compete ancillary to the sale of that business. During the trial, the defendant consented to the issuance of a permanent injunction and to damages offsetting deferred compensation.

Medical Professionals

  • On behalf of an orthopedic surgeon who had signed a covenant not to compete with a private practice, we successfully persuaded the employer not to institute litigation when the physician left his employment. No compensation of any kind was paid by the surgeon to his former practice.

Patent/Cutting Edge Technology

  • Successfully defended a professor and other physicians and technicians in a university laboratory in an alleged trade secret disclosure dispute involving the measurement of T-cell secretions, an important stepping stone in identification of the cure for AIDS. Although the state trial court awarded a TRO preventing disclosure of the alleged trade secret by the professor in a speech before the World Health Organization, we removed the dispute to federal court, sought to dissolve the TRO and procured a voluntary dismissal of the entire lawsuit minutes before the depositions of the plaintiff’s representatives were about to be taken. The client, through our business group, later secured the technology for commercial development.

Commercial Enterprises

  • Successfully defended the Vice President of Sales who allegedly violated a non-compete agreement by beginning to work for a direct competitor in the packaging business. Money damages were not paid on behalf of the defendants, and the dispute was resolved when the parties agreed that certain customers would not be contacted for a period of time. This agreement had very little impact upon our client’s ability to move forward.

Accountants

  • Represented the founder and several partners of an accounting firm which was in danger of dissolution when a major business producing partner decided to form his own firm. Although a lawsuit was filed by the departing partner, the dispute was resolved following protracted negotiations by which myriad issues, including unfair competition and trade secret disclosure allegations, were made.

Marketing/Advertising

  • Represented two major firms in this area. In the first case, our client employed an entire division of a competing advertising firm with specialization in the high performance automotive field. The plaintiff/former employer never requested preliminary injunctive relief, and the matter was settled based upon installment payments which were particularly affordable in light of the significant volume of business which was generated. The suit was settled in order to avoid the cost and inconvenience of litigation.
  • In the second matter, we provided advice to a leading marketing/ advertising firm when it similarly hired away a competitor’s major producer/officer. We guided the new employer/client throughout the process and were prepared to, at any time, file a declaratory judgment action, which filing proved to be unnecessary. This matter evidences our cost effective approach to even emergency matters such as these.
  • We have successfully prosecuted claims involving breach of non-competition and non-solicitation agreements on behalf of one of the nation’s leading providers of outsourced business services. The lawsuits have been pursued in state and federal courts in Cleveland and in cities outside Ohio. We have secured relief in the form of temporary restraining orders, preliminary injunctions and permanent injunctions.
  • Have successfully prosecuted cases involving claims of trade secret misappropriation and breach of non-competition agreements on behalf of a publisher of classifieds and editorial magazines with over ten-thousand employees.
  • Have successfully defended a former employee of a company that purchased medical bad debt. The case, filed in federal district court in Cleveland, alleged that the former employee misappropriated trade secrets and violated a non-competition agreement. We demonstrated that documents in the employee’s possession were not confidential and that the non-competition provision at issue could not be enforced by a successor company.