Trade Secrets/Unfair Competition/Noncompetes


In today’s lightning-fast, competitive, data-driven global marketplace, a company’s ability to survive and thrive depends upon protecting its business processes, client relationships, and knowledgeable workforce. Trade secrets, proprietary information, and human capital often represent a company’s most valuable assets, making the choice of an experienced law firm more important now than ever before.

Within Ulmer, there exists a select group of attorneys who specialize in protecting clients’ major assets – their employees, their customers, and their confidential and proprietary information. We have particular experience with the Federal Defend Trade Secrets Act (DTSA), state trade secret and unfair competition claims, non-compete agreements and other restrictive covenants, and fiduciary duty claims. We protect clients in three ways:

  • First, we get to know our clients’ businesses and analyze the measures in place to protect their personnel and businesses 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 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 efforts are undertaken with an eye toward those measures prohibited by law. We also have experience quickly coordinating forensic investigations of computer, phone, and other personal electronic devices to provide a comprehensive analysis of potential theft of trade secrets and proprietary information.
  • 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 that 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 and bet-the-company cases involving trade secrets, proprietary information, client relationships, unfair competition, and restrictive covenants. By working on both prosecution and defense actions, we provide our clients the benefit of our experience with the strategies and pitfalls involved on either side of a trade secret, employee lift-out, or non-compete agreement action. We are also on the cutting edge of new developments in employment lift-outs and trade secret laws, including litigating one of the first cases brought under the DTSA in federal court, and we have subsequently applied our knowledge in a number of DTSA cases. 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 attorneys work to secure injunctive relief and/or damages in cases where clients’ businesses have been threatened and damaged. We work closely with our clients throughout lawsuits, helping them to understand the legal process and we work tirelessly to achieve optimal results.

Ulmer & Berne LLP is pleased to announce that Chief Diversity Officer Timothy J. Downing has been recognized by The National Law Journal (NLJ) in its inaugural Equality Trailblazers list. This new list highlights the accomplishments of those who have made significant strides in the fight for gender and LGBTQ equality. “I...

Ulmer Partner Stephanie Dutchess Trudeau has been named to BTI Consulting Group’s Client Service All-Stars 2019, a list of top-tier attorneys identified for delivering the absolute best client service. The All-Stars represent the epitome of client service and demonstrate an unrelenting pursuit to find what best fulfills clients’ needs. In-house counsel and clients...

Timothy J. Downing, Chief Diversity Officer of Ulmer & Berne LLP, has been appointed to Cuyahoga County’s Human Rights Commission, which aims to promote diversity, inclusion, and harmony through every facet of the county. Downing will serve as one of three attorneys comprising the first assembly of the Commission, which...

Appointment bolsters the firm’s successful diversity and inclusion initiatives Ulmer & Berne LLP is pleased to announce that Timothy J. Downing has been appointed as the firm’s first Chief Diversity Officer. His appointment to this role provides added momentum to Ulmer’s successful diversity and inclusion initiatives and reflects the firm’s commitment to...

Ulmer & Berne LLP is pleased to announce that Partner Timothy J. Downing has been appointed to serve on the Alumni Council of Allegheny College. The Alumni Council is the governing body of the college’s Alumni Association, and is dedicated to strengthening the bond between the college and its alumni,...

Ulmer Labor & Employment Partner to Head Charitable Fundraising Arm of CMBA  Stephanie E. Dutchess Trudeau, Partner at Ulmer & Berne LLP, became President of the Cleveland Metropolitan Bar Foundation (CMBF) at the Cleveland Metropolitan Bar Association’s (CMBA) 11th annual meeting on June 1, 2018. Stephanie will guide CMBF in its...

Ulmer & Berne LLP is pleased to announce the promotion of Seth A. Voit to partner. Voit, a member of Ulmer’s Intellectual Property & Technology Group, is based in the firm’s Cincinnati office. “We are both excited and fortunate to welcome Seth into our partnership,” said Ulmer Managing Partner Scott...

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.
  • Represented a manufacturer in one of the first cases filed in the United States under the Federal Defend Trade Secrets Act (DTSA) to obtain injunctive relief in the U.S. District Court for the Northern District of Illinois against the company’s chief science officer and a new startup competitor he joined. The firm’s client specialized in fitness equipment. As the TRO papers disclosed, for over a year (while drawing a salary from the company), the inventor worked with his employer’s primary distributor to secretively develop a competitive technology, feeding all of the trade secrets to the new competitor to develop the second generation of the client’s technology. By bringing the case under the new DTSA, the firm obtained a TRO maintaining jurisdiction in federal court. The TRO included broad injunctive relief, halting sales of the competitive product, escrowing any ill-gotten profits, and resulting in a favorable settlement following court-ordered mediation.

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.

Financial Services

  • Represented a publicly held financial institution in prosecution of claims against two former bank employees who left the client’s employment to join a competitor. The ex-employees were bound by confidentiality agreements and had agreed not to solicit their employer’s customers for a period of time. Nevertheless, between them they took hundreds of confidential documents from the client and were actively soliciting several customers. We filed for injunctive relief in the U.S. District Court for the Northern District of Texas against the former employees and their new employer. The new employer produced more records and agreed to forensically remediate all of the client’s documents that had been introduced into its system by the bankers. Sanctions were obtained against the lawyer for one of the defendants due to failure to comply with a court discovery order, and the court issued a preliminary injunction against both defendants’ further use of trade secrets, including prospect lists, and ordered all data and documents to be turned over to our client.

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 negligible impact upon our client’s ability to move forward.
  • After a seven-week bench trial in New Jersey State Chancery Court, we obtained a judgment in favor of our client awarding damages for lost profits and attorneys’ fees for breaches of fiduciary duty, breach of the duty of loyalty, theft of trade secrets and confidential information and related conspiracy, as well as tortious interference with business opportunity. Also, we secured defense verdicts as to counterclaims and third-party claims against the company and its majority shareholder. We successfully obtained a TRO, immediately after filing the action, directing defendants to turn over all of their personal computers and electronic devices for forensic examination, as well as an order of non-competition by the former director, and we preliminarily enjoined defendants from utilizing the company’s trade secrets and confidential and proprietary information. We won a substantial award of attorneys’ fees under the state theft of trade secrets statute, and additional fees for spoliation and violation of a court order.

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.
  • Represented a top direct-mail service provider in the defense of claims arising from the departure of six employees who left a competitor’s employment to join the client company. The competitor filed suit in the U.S. District Court for the Northern District of Illinois, asserting claims against its former employees under the DTSA, the Illinois Trade Secrets Act, and the Computer Fraud and Abuse Act, among others, and claims of tortious interference with economic advantage, aiding and abetting breach of fiduciary duty, unfair competition, civil conspiracy and unjust enrichment against the firm’s client. At the outset of the case, the firm defeated the competitor’s emergency motion for sweeping temporary injunctive relief.