As a business owner in the Great Lakes State, you probably rely on many forms of intellectual property law to protect your company. These might include copyright, trademark, and patent law. Another important form of intellectual property is trade secrets. In Michigan, what laws protect your business's trade secrets?
Trade secrets often comprise customer lists, sensitive marketing information, non-patented inventions, software, formulas and recipes, techniques, processes, and other business information that provides a company with a business edge. In legal terms, information is more likely to be considered a trade secret if it is:
Perhaps the most common way for Michigan businesses to protect their trade secrets is by having employees sign nondisclosure agreements (NDAs), which are enforceable in this state (but not all states). These NDAs are written contracts between employers and employees that attempt to prevent the employee from disclosing confidential information after leaving the company.
For example, if you own a computer chip manufacturing plant in Ann Arbor, an NDA with an employee could prevent that person from disclosing your methods of production to a future employer for a certain period of time. The employee knows that disclosing your proprietary chip manufacturing process, or misappropriating it in some fashion, would enable your business to sue the employee for breach of the NDA.
Michigan is one of the many states that have adopted the Uniform Trade Secrets Act (UTSA). Michigan’s trade secret law can be found at M.C.L.A. Secs. 445.1901 to 445.1910.
The statute defines a trade secret as "information, including a formula, pattern, compilation, program, device, method, technique, or process, that is both of the following: (i) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use [and] (ii) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy."
Michigan’s version of the UTSA refers to the theft of trade secrets as misappropriation. Under Michigan law, "misappropriation" means the acquisition of a trade secret by someone who knows or has reason to know that the trade secret was acquired by improper means, such as theft, bribery, misrepresentation, or breach of or inducement of a breach of duty to maintain secrecy.
It also includes the disclosure or use of a trade secret without consent by someone who used improper means to acquire knowledge of the trade secret, for example, an ex-employee who spills company secrets to a rival.
Michigan prohibits use of trade secrets by a company that has “has reason to know” that the material constitutes a trade secret. This is known as constructive knowledge (versus actual knowledge). In other words, even if a Michigan company was unaware it possessed purloined trade secrets, it can still be prosecuted under Michigan law if it should have known.
Penalties for Misappropriation
Under Michigan law, a trade secret thief can be prevented from disclosing or using a trade secret by court order, known as an injunction. This is true for both actual or threatened misappropriation.
The injunction may be terminated when the trade secret has ceased to exist, but the injunction may be continued for an additional reasonable period of time in order "to eliminate any commercial advantage that otherwise would be derived from the misappropriation." In exceptional circumstances, an injunction may condition future use upon payment of a reasonable royalty for no longer than the period of time for which use could have been prohibited. Exceptional circumstances can a theft that is so bad that the court order would be rendered meaningless.
A victim of trade secret theft can also seek financial compensation, based on measuring the actual loss attributed to the theft or the profits (or “unjust enrichment”) acquired by the trade secret thief. As M.C.L.A. Sec. 445.1904 states, "Damages can include both the actual loss caused by misappropriation and the unjust enrichment caused by misappropriation that is not taken into account in computing actual loss."
In egregious situations, a Michigan court can award punitive damages up to twice the amount of any award. Attorney fees will also be awarded in cases where the infringement is found to be willful and malicious (rather than merely accidental or negligent).
Under M.C.L.A. Sec. 445.1907, an action for misappropriation must be brought within three years "after the misappropriation is discovered or by the exercise of reasonable diligence should have been discovered."
This means that if you discover a theft of your company's trade secret, you should act relatively quickly to retain an attorney, or you may find yourself time-barred from court.
In addition to Michigan’s rules regarding trade secrets, certain federal rules also apply in Michigan. The Economic Espionage Act of 1996 makes the theft of trade secrets a federal crime. The Act prohibits the theft of a trade secret by a person intending or knowing that the offense will injure a trade secret owner.
The Act also makes it a federal crime to receive, buy, or possess trade secret information knowing it to have been stolen. The Act’s definition of “trade secret” is similar to that of the Uniform Trade Secrets Act.
The penalties for a violation of this statute include a potential prison term of 15 years and fines up to $5 million, depending on whether the defendant is an individual or a corporation. A private party can still sue for trade secret theft even if the federal government files a criminal case under the Economic Espionage Act.