Introducing a takedown for trade secrets on the internet

Wisconsin Law Review

Volumn 2007, Issue 5, 2007, Pages 1041-1089

  Rowe, Elizabeth A ^a  

^a UNIVERSITY OF FLORIDA   (United States)

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EID: 38949086882     PISSN: 0043650X     EISSN: None     Source Type: Journal    
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References (386)

1. This hypothetical is loosely based on a real event. Eddan Katz, Bargain Shoppers Chilled by Retailers' DMCA Threats, CHILLING EFFECTS CLEARINGHOUSE, Nov. 22, 2002, http://www. chillingeffects.org/weather.cgi?WeatherID=280.
2. See, e.g., DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 7-8 (Cal. 2003) (requiring plaintiff to file suit against Web-site operators after they ignored the plaintiffs request to remove the plaintiffs allegedly trade-secret information from their Web sites). Another procedural approach might be to file an in rem action seeking removal of the posting.
3. See Victoria A. Cundiff, Trade Secrets and the Internet: Preventing the Internet from Being an Instrument of Destruction, in 12TH ANNUAL INSTITUTE ON INTELLECTUAL PROPERTY LAW 403, 412 (PLI Intellectual Property, Course Handbook Series No. G-877, 2006).
4. Elizabeth A. Rowe, Saving Trade Secret Disclosures on the Internet Through Sequential Preservation, 42 WAKE FOREST L. REV. 1, 46 (2007) (explaining that, generally, when a trade secret appears on the Internet and becomes public, the owner loses the ability to claim it as a trade secret and prevent others from using it).
5. Plaintiffs seeking injunctive relief in trade-secret cases face a delicate struggle between moving quickly to stem further dissemination of the secret and proceeding with deliberation after careful investigation of the facts and preparation of the pleadings. Otherwise, plaintiffs not only may fail to obtain relief but also may expose themselves to possible sanctions or counterclaims. See generally JAMES POOLEY, TRADE SECRETS § 10.06[1] (1997).
6. See, e.g., United States v. Lange, 312 F.3d 263, 265 (7th Cir. 2002) (involving an employee who solicited potential buyers of his employer's trade secrets over the Internet);
7. United States v. Martin, 228 F.3d 1, 19 (1st Cir. 2000) (e-mailing trade secrets outside the company without authorization);
8. O'Grady v. Superior Court, 44 Cal. Rptr. 3d 72, 76 (Cal. Ct. App. 2006) (seeking identity of sources who disclosed Apple's trade secrets);
9. Religious Tech. Ctr. v. Netcom On-Line Commc'ns Servs., Inc., 907 F. Supp. 1361, 1365-66 (N.D. Cal. 1995) (involving the posting of the Church of Scientology's secret documents);
10. NewSouth Commc'ns Corp. v. Universal Tel. Co., No. CIV.A. 02-2722, 2002 WL 31246558, at 1, 9 (E.D. La. Oct. 4, 2002) (e-mailing trade secrets outside the company without authorization);
11. Edelman v. N2H2, Inc., 263 F. Supp. 2d 137, 138 (D. Mass. 2003) (involving a computer researcher seeking declaratory judgment allowing him to post potentially trade-secret information on the Internet);
12. Chrysler Corp. v. Sheridan, No. 227757, 2003 Mich. App. LEXIS 312, at 10 (Mich. Ct. App. Feb. 11, 2003) (mentioning employee's disclosure of Chrysler's confidential information to others, including an online publication);
13. Ford Motor Co. v. Lane, 67 F. Supp. 2d 745, 753 (E.D. Mich. 1999) (involving the posting of Ford's secret documents);
14. United States v. Genovese, 409 F. Supp. 2d 253, 254 (S.D.N.Y. 2005) (involving the posting of Microsoft source code on the Internet);
15. Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362, 1368 (E.D. Va. 1995) (involving the posting of the Church of Scientology's secret documents);
16. DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 1 (Cal. 2003) (posting a secret program regarding encryption of DVDs);
17. Immunomedics, Inc. v. Doe, 775 A.2d 773, 774 (N.J. Super. Ct. App. Div. 2001) (seeking identity of individual who posted trade secret on Internet).
18. See Mike McKee, "Friends " in High Places: In a Sign of What's at Stake, California Justices Deluged with 42 Amicus Briefs in Trade Secrets Dispute, MIAMI DAILY BUS. REV., Aug. 30, 2002, at A10.
19. In the last three years approximately seventy reported decisions were issued addressing copyright infringement and the DMCA. A search of the Westlaw federal-court-cases database for "'DMCA D.M.C.A.' 'Digital Millennium Copyright Act' & 'copyright infring!' & 'da(last 3 years)'" yielded sixty-nine cases. A similar search conducted in the LexisNexis federal-court-cases database yielded seventy-eight cases. The Chilling Effects database contained 1,248 takedown notices related to the DMCA safe harbor provisions. Chilling Effects Clearinghouse, http://www.chillingeffects.org/ graph.cgi (last visited Oct. 18, 2007).
20. See infra note 129 and accompanying text. Indeed, attempting to use the DMCA takedown to address trade-secret harm may have led to liability for misrepresentation.
21. See, e.g., Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1204 (N.D. Cal. 2004) (finding defendant liable under 17 U.S.C. § 512(f) for misrepresenting potentially trade-secret-protectable information as entitled to copyright protection). Because the takedown provision under the DMCA applies exclusively to copyright law, it may have had the unintended consequence of an overreporting of instances of alleged copyright infringement and a corresponding underreporting of suspected trade-secret-misappropriation cases on the Internet. Thus, trade-secret law has not benefited from the rise in reported cases under the DMCA. Interestingly, a byproduct of enacting trade-secret-takedown legislation might be that it alleviates some of the misuse of the DMCA's takedown notices whereby claimants disguise what really are trade-secret claims as copyright infringement in order to make use of § 512.
22. See Jennifer M. Urban & Laura Quilter, Efficient Process or "Chilling Effects"? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, 22 SANTA CLARA COMPUTER & HIGH TECH. L.J. 621, 678, 684 (2006) (discussing use of § 512 notices for unfair competition and privacy claims and the extent to which the notices appeared to be used against competitors).
23. See, e.g., DVD Copy Control Ass'n, Inc. v. Bunner, 10 Cal. Rptr. 3d 185, 195 (Cal. Ct. App. 2004) (stating that a defendant in a trade-secret case typically "has as much interest as the plaintiff has in keeping the secret away from good faith competitors and out of the public domain").
24. Lyrissa Barnett Lidsky & Thomas F. Cotter, Authorship, Audiences, and Anonymous Speech, 82 NOTRE DAME L. REV. 1537, 1575 (2007) (discussing the phenomenon whereby users of the Internet are less inhibited when expressing themselves).
25. See generally Katherine V.W. Stone, The New Psychological Contract: Implications of the Changing Workplace for Labor and Employment Law, 48 UCLA L. REV. 519, 552 (2001) (discussing the old psychological contract, which required the employee to give loyalty to the employer in exchange for job security and indicating that it has been replaced with lower expectations from both the employee and the employer);
26. Benjamin Aaron & Matthew Finkin, The Law of Employee Loyalty in the United States, 20 COMP. LAB. L. & POL'Y J. 321, 339 (1999) (examining various components of employee loyalty).
27. Ford Motor Co. v. Lane, 67 F. Supp. 2d 745, 753 (E.D. Mich. 1999).
28. Am. Online, Inc. v. Anonymous Publicly Traded Co., 542 S.E.2d 377, 385 (Va. 2001) (finding that the plaintiff had not carried its burden of showing special circumstances to justify anonymity, the court granted the ISP's motion to quash).
29. See Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1205 (N.D. Cal. 2004).
30. See 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.");
31. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 475 (1974) ("The subject of a trade secret must be secret, and must not be of public knowledge or of a general knowledge in the trade or business."). For a more detailed analysis of trade secrets on the Internet,
32. see Rowe, supra note 3, at 7-10.
33. See generally Oja v. U.S. Army Corps of Eng'rs, 440 F.3d 1122, 1131 (9th Cir. 2006) ("Internet publication is a form of 'aggregate communication' in that it is intended for a broad, public audience, similar to print media.") (internal citation omitted);
34. Jerome Stevens Pharms., Inc. v. FDA, 402 F.3d 1249, 1251 (D.C. Cir. 2005) (stating that trade secrets posted on the FDA's Web site are available to the public);
35. Am. Booksellers Found, v. Dean, 342 F.3d 96, 100 (2d Cir. 2003) (stating that posting information to a Web site available to the public is distribution).
36. See Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., No. C-95-20091 RMW, 1997 U.S. Dist. LEXIS 23572, at 39-41 (N.D. Cal. Jan. 3, 1997);
37. Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362, 1368 (E.D. Va. 1995).
38. But see DVD Copy Control Ass'n, Inc. v. Bunner, 10 Cal. Rptr. 3d 185, 190 (Cal. Ct. App. 2004) (finding that the mere posting of information on the Internet does not destroy a trade secret).
39. Posting "consists of directly placing material on or in a Web site, bulletin board, discussion group, newsgroup, or similar Internet site or 'forum,' where it will appear automatically and more or less immediately to be seen by anyone with access to that forum." O'Grady v. Superior Court, 44 Cal. Rptr. 3d 72, 91 (Cal. Ct. App. 2006). Posting, therefore, allows direct self-publication of information. A person may also send information to a site, but the owners or moderators of the site of decide what to post. See id. at 91 n. 15.
40. See, e.g., Jerome Stevens Pharms., Inc., 402 F.3d at 1254-55, 1258 (reversing the district court's dismissal by holding that the FDA could be liable for misappropriation of trade secrets where it posted plaintiffs trade secrets on its Web site for five months and remanding the case to the district court).
41. Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F. Supp. 1231, 1256 (N.D. Cal. 1995) (internal citations omitted).
42. See Rowe, supra note 3, at 29-39 (discussing a preservation model for analyzing when trade-secret protection may be retained despite disclosure).
43. Id. at 32-33.
44. The appropriate strategy must be carefully tailored in light of the circumstances. See Cundiff, supra note 2, at 408-13 (discussing considerations in litigating to remove trade secrets from the Internet).
45. Rowe, supra note 3, at 32-33.
46. See UNIF. TRADE SECRETS ACT § 1(4) (amended 1985), 14 U.L.A. 538 (2005);
47. RESTATEMENT (FIRST) OF TORTS § 757 cmt. b (1939).
48. See, e.g., PepsiCo v. Redmond, 54 F.3d 1262, 1265-70 (7th Cir. 1995);
49. ConAgra, Inc. v. Tyson Foods, Inc., 30 S.W.3d 725, 728-30 (Ark. 2000);
50. McFarland v. Brier, No. C.A. 96-1007, 1998 WL 269223, at 3 (R.I. Super. Ct. May 13, 1998).
51. See John P. Hutchins, The Corporation's Valuable Assets: IP Rights Under Sox, in 26TH ANNUAL INSTITUTE ON COMPUTER & INTERNET LAW 289, 291 (PLI Intellectual Property, Course Handbook Series No. G-859, 2006).
52. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 155 (1989).
53. See Richard A. Epstein, Privacy, Publication, and the First Amendment: The Dangers of First Amendment Exceptionalism, 52 STAN. L. REV. 1003, 1037 (2000) ("[T]he full set of efficiency arguments opts strongly for the protection of trade secrets, given their essential role in modern industry.").
54. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 493 (1974);
55. Marina Lao, Federalizing Trade Secrets Law in an Information Economy, 59 OHIO ST. L.J. 1633, 1633-35 (1998) (noting that corporations are increasingly relying on trade-secret protection).
56. See Hutchins, supra note 27, at 292.
57. See generally id.;
58. ROBERT P. MERGES, PETER S. MENELL & MARK A. LEMLEY, INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE 34-35 (4th ed. 2006) (discussing the importance of trade secrets to small companies).
59. R. Mark Halligan, Trade Secrets and the Inevitable Disclosure Doctrine, in TRADE SECRETS 2002: HOW TO PROTECT CONFIDENTIAL BUSINESS & TECHNICAL INFORMATION 145, 151 (PLI Intellectual Property, Course Handbook Series No. G-719, 2006).
60. While the risk of loss is one that is inherent in choosing this form of protection, it does not necessarily suggest that a trade-secret owner should have instead chosen patent protection. The choice of trade-secret protection or patent protection must be based on a very careful assessment of the particular information involved and thorough consideration of business and legal factors involving, for example, the nature of the information, the ease with which it can be reverse engineered, and the feasibility and cost of obtaining patent protection. See generally Andrew Beckerman-Rodau, The Choice Between Patent Protection and Trade Secret Protection: A Legal Business Decision, 84 J. PAT. & TRADEMARK OFF. SOC'Y 371 (2002). Accordingly, an owner that chooses trade-secret protection over patent protection has not necessarily forgone a "better" form of protection, especially since there is a wide range of information that is eligible for trade-secret protection but not patent protection.
61. See POOLEY, supra note 4, § 3.01[1][a] (comparing patent protection and trade-secret protection).
62. Brooks W. Taylor, You Can't Say That!: Enjoining Publication of Trade Secrets Despite the First Amendment, 9 COMP. L. REV. & TECH. J. 393, 394-95 (2005) (discussing reasons why corporations rely on trade-secret protection).
63. Copyright protection may attach without registration, but registration is necessary before a plaintiff files suit for infringement. Thus, prior to registration a copyright owner is in a similar situation as the owner of a trade secret who does not know whether the targeted material will indeed be protectable. Registration of a copyright provides a presumption of validity. Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990).
64. Roger M. Milgrim, Commission Proposed Capital Punishment-By Definition-for Trade Secrets, A Uniquely Valuable IP Right, 88 J. PAT. & TRADEMARK OFF. SOCY 919, 941 (2006) ("[U]nlike both patent and copyright law . . . trade secret law offers protection solely to matter of value . . . .").
65. 17 U.S.C. § 102(a) (2000).
66. Id. § 102(b).
67. Lao, supra note 30, at 1634.
68. Some commentators question whether ISPs should ever be liable for copyright infringement. See, e.g., MARJORIE HEINS & TRICIA BECKLES, BRENNAN CENTER FOR JUSTICE, WILL FAIR USE SURVIVE? 5 (2005). This debate is beyond the scope of this Article.
69. See UNIF. TRADE SECRETS ACT § 1(2)(ii) (1985).
70. The RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 40 (1995)
71. and RESTATEMENT (FIRST) OF TORTS § 757 (1939) include definitions that are consistent with the Uniform Trade Secrets Act.
72. See Eugene Volokh, Freedom of Speech and Intellectual Property: Some Thoughts After Eldred, 44 Liquormart,
73. and Bartnicki, 40 HOUS. L. REV. 697, 717-18 (2003).
74. See infra notes 125 and 131 and accompanying text.
75. Copyright cases are generally not subject to First Amendment scrutiny because copyright law already includes fair-use and other free-expression safeguards. Eldred v. Ashcroft, 537 U.S. 186, 221 (2003);
76. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985).
77. See infra Part VI.A.
78. S. REP. NO. 105-190, at 1-2 (1998).
79. Emily Zarins, Notice Versus Knowledge Under the Digital Millennium Copyright Act's Safe Harbors, 92 CAL. L. REV. 257, 263 (2004).
80. S. REP. NO. 105-190, at 2, 8 (1998).
81. Id. at 8.
82. Id.
83. See Zarins, supra note 48, at 264-66.
84. THE REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE 114; 122 (1995), available at http://www.uspto.gov/web/offices/com/doc/ipnii/ipnii.pdf.
85. Id. at 117.
86. Id. at 101.
87. See Sega Enters. Ltd. v. Maphia, 857 F. Supp. 679 (N.D. Cal. 1994);
88. Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
89. THE REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, supra note 53, at 123.
90. Id. at 114-15.
91. Id. at 115.
92. See 18 U.S.C. § 2701 (2000);
93. Pamela Samuelson, The Copyright Grab, WIRED, Jan. 1996, available at http://www.wired.com/wired/archive/4.01/white.paper_pr.html; Zarins, supra note 48, at 266.
94. Samuelson, supra note 59.
95. Fonovisa, Inc. v. Cherry Auction, Inc., 847 F. Supp. 1492, 1496 (E.D. Cal. 1994), rev'd, 76 F.3d 259, 261 (9th Cir. 1996).
96. See Niva Elkin-Koren, Copyright Law and Social Dialogue on the Information Superhighway: The Case Against Copyright Liability of Bulletin Board Operators, 13 CARDOZO ARTS & ENT. L.J. 345, 406-07 (1995);
97. Zarins, supra note 48, at 266.
98. Zarins, supra note 48, at 267.
99. See H.R. REP. NO. 105-551, pt. 1, at 11;
100. Religious Tech. Ctr. v. Netcom On-Line Commc'ns Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995).
101. Religious Tech. Ctr., 907 F. Supp. at 1365-66.
102. Id. at 1366.
103. Id. at 1367.
104. Id. at 1383.
105. Id. at 1370.
106. Id.
107. Id. at 1374.
108. Id.
109. Id.
110. Id. at 1374-75.
111. Id. at 1375.
112. Id. at 1377-78.
113. H.R. REP. NO. 105-551, pt. 1, at 11 (1998).
114. Mike Scott, Safe Harbors Under the Digital Millennium Copyright Act, 9 N.Y.U. J. LEGIS. & PUB. POL'Y 99, 116 (2006).
115. H.R. REP. NO. 105-551, pt. 1, at 11 (1998).
116. S. REP. NO. 105-190, at 19 (1998).
117. Scott, supra note 78, at 116.
118. S. REP. NO. 105-190, at 19 (1998).
119. See id. ;
120. 17 U. S. C. § 512(a)-(d) (2000). Recognizing that these protections may not extend far enough, Congress also extended the safe-harbor provision to provide limited liability to nonprofit educational institutions that act as ISPs for faculty and graduate students performing teaching or researching functions. Id. § 512(e).
121. 17 U.S.C. § 512(f)(1)-(2).
122. S. REP. NO. 105-190, at 20 (1998).
123. 17 U.S.C. § 512(i).
124. Id. § 512(i)()(A).
125. Id. § 512(i)(2)(C).
126. Id. § 512(C)(1)(A)(i)-(iii).
127. See id. § 512(c)(1)(B).
128. H.R. REP. NO. 105-551, pt. 2, at 53 (1998).
129. Id.
130. Id.
131. 17 U.S.C. § 512 (c)(2).
132. Id. § 512(c)(3)(A)(i)-(iv).
133. Id. § 512(c)(3)(v). This provision seems to cross reference the fact that anyone who "materially misrepresents . . . that material or activity is infringing . . . shall be liable for any damages . . . incurred" as a result of the misrepresentation.
134. See id. § 512(f)(1)-(2).
135. Id. § 512(c)(3)(B)(i)-(ii).
136. See id. § 512(c)(3)(B)(ii).
137. Id. § 512(c)(1)(A)(iii).
138. Id. § 512(g)(2)(A).
139. Id. § 512(g)(3)(C).
140. Id. § 512(g)(2)(B).
141. Id. § 512(g)(2)(C).
142. Id. § 512(h)(1), (3).
143. Id. § 512(a).
144. Id.
145. Id. § 512(a)(1)-(5), (b)(2)(C)-(E).
146. Hosting services include Web sites, forums, blogs, and social networking sites.
147. Id. § 512(c)-(d).
148. Search engines are not required to provide notice to the alleged infringer. See id. § 512(d).
149. Id. § 512(g)(2).
150. Id.
151. Id. § 1201.
152. See Universal City Studios, Inc. v. Reimerdes, 82 F. Supp. 2d 211, 217 (S.D.N.Y. 2000) ("Section 512(c) provides protection only from liability for copyright infringement. Plaintiffs seek to hold defendants liable not for copyright infringement, but for a violation of § 1201(a)(2), which applies only to circumvention products and technologies.") (internal citations omitted).
153. See 17 U.S.C. § 1201(a)(2), (b)(1)(A).
154. It provides even greater protection than that afforded under trade-secret law in that it appears to prevent reverse engineering. It prohibits trafficking in technology that can circumvent technological measures employed by the copyright owner. Id. § 1201.
155. See Universal City Studios, Inc. v. Corley, 273 F.3d 429, 454-55 (2d Cir. 2001) (upholding an injunction under the anticircumvention provision and finding that the government had a substantial interest in preventing unauthorized access to encrypted copyrighted material).
156. See, e.g., HEINS & BECKLES, supra note 41, at 8;
157. Michael Driscoll, Will YouTube Sail into the DMCA's Safe Harbor or Sink for Internet Piracy?, 6 J. MARSHALL REV. INTELL. PROP. L. 550, 566-68 (2007), available at http://www.jmripl.com/publications/vol6/issue3/driscoll.pdf;
158. Malla Pollack, Rebalancing Section 512 To Protect Fair Users from Herds of Mice-Trampling Elephants, or a Little Due Process Is Not Such a Dangerous Thing, 11 SANTA CLARA COMPUTER & HIGH TECH. L.J. 547, 547-48, 554 (2006);
159. Scott, supra note 78, 128-35;
160. Urban & Quilter, supra note 8, at 640.
161. Approximately forty-four law-review articles published this year and last year discuss the DMCA takedown provision. Only about three articles discuss the legislation overall in a positive light. These articles are: Emily Favre, Online Auction Houses: How Trademark Owners Protect Brand Integrity Against Counterfeiting, 15 J.L. & POL'Y 165, 199-201 (2007);
162. Britton Payne, Super-Grokster: Untangling Secondary Liability, Comic Book Heroes and the DMCA, and a Filtering Solution for Infringing Digital Creations, 16 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 939 (2006);
163. Yiman Zhang, Establishing Secondary Liability with a Higher Degree of Culpability: Redefining Chinese Internet Copyright Law to Encourage Technology Development, 16 PAC. RIM L. & POL'Y J. 257, 281-82 (2007). Half of the remainder of the forty-four law-review articles that discuss the DMCA takedown provision express criticisms of the provision, while the other half are neutral. The searches were conducted in the LexisNexis "US Law Reviews and Journals" database (DMCA and "take down" [from 12/31/2005 through 07/29/2007]) and in Westlaw's "Journal and Law Reviews" database (dmca & "take-down" & da[after 12/31/2005]).
164. See, e.g., Urban & Quilter, supra note 8, at 688.
165. See, e.g., id.
166. S. REP. NO. 105-190, at 8 (1998).
167. Since its inception in 2002, the Chilling Effects Web site has invited the public and ISPs to submit cease-and-desist and takedown letters that they have received from copyright holders. Chilling Effects Clearinghouse, http://www.chillingeffects.org/dmca512 (last visited Oct. 18, 2007).
168. Urban & Quilter, supra note 8, at 641-42.
169. Id. at 667-78.
170. HEINS & BECKLES, supra note 41, at 8.
171. Id.
172. Section 512's safe-harbor provision does not apply to trademark infringement. See 17 U.S.C. § 512(c) (2000);
173. Gucci Am., Inc. v. Hall & Assoes., 135 F. Supp. 2d 409, 410-11 (S.D.N.Y. 2001) (refusing to grant ISP's motion to dismiss where trademark infringement allegedly occurred on a Web site hosted by the ISP).
174. HEINS & BECKLES, supra note 41, at 36.
175. Id. at 32. They reported that another twenty-seven percent of the sample covered material, by their assessment, was possibly protected under fair use or the First Amendment.
176. Id.
177. The Economic Espionage Act, enacted in 1996, criminalizes trade-secret theft and misappropriation. 18 U.S.C. §§ 1831-39 (2000).
178. See supra notes 22-23 and accompanying text (explaining the need for promptness).
179. Professor Lemley proposes a uniform safe-harbor provision for ISPs that covers all areas of intellectual property. See Mark A. Lemley, Rationalizing Internet Safe Harbors (2007) (unpublished manuscript), available at http://web.si.umich.edu/tprc/papers/2007/660/ rationalizinginternetsafeharbors.pdf. This would be an interesting alternative to the current piecemeal approach to safe harbors. His suggestion, nonetheless, further provides support for the safe-harbor framework as the best approach for addressing these kinds of harms.
180. See C&F Packing Co. v. IBP, Inc., No. 93 C 1601, 1998 U.S. Dist. LEXIS 3221, at 19 (N.D. Ill. Mar. 16, 1998) (explaining that constructive notice is sufficient to show that information was a trade secret).
181. See, e.g., Curtiss-Wright Corp. v. Edel-Brown Tool & Die Co., 407 N.E.2d 319, 324 (Mass. 1980) (reasoning that a defendant cannot shield himself by "studious ignorance of pertinent 'warning' facts"
182. (quoting R. MILGRIM, TRADE SECRETS § 5.04[2] (1978)).
183. See id.
184. See generally Urban & Quilter, supra note 8, at 667-68.
185. See, e.g., id.;
186. HEINS & BECKLES, supra note 41, at 36.
187. See infra Part VI.C.
188. See Rossi v. Motion Picture Ass'n of Am., Inc., 391 F.3d 1000, 1003 (9th Cir. 2004).
189. See FED. R. CIV. P. 65(c).
190. Under the DMCA, if an owner misrepresented its claim in the takedown notice, then the owner is liable to the ISP for any damages resulting from an improper removal of material. 17 U.S.C. § 512(f) (2000).
191. Id. Under § 512(f) any of the parties involved may be awarded damages, costs, and attorneys' fees if either the copyright owner or the alleged infringer makes a knowing, material misrepresentation in a notice or counternotice.
192. Id.
193. 337 F. Supp. 2d 1195 (N.D. Cal. 2004).
194. Id. at 1204 (interpreting § 512(f)).
195. Evidence supporting the strength of the trade-secret claim would be relevant to the trade-secret owner's alleged bad faith in asserting the claim. See CVD, Inc. v. Raytheon Co., 769 F.2d 842, 851 (1st Cir. 1985).
196. See, e.g., id. (ruling in the context of an antitrust claim that "the assertion of a trade secret claim in bad faith, in an attempt to monopolize, can be a violation of the antitrust laws.") (internal citations omitted).
197. See infra Part VI.B.
198. Congress, in § 512(a), codified the decision in Religious Technology Center v. Netcom. See 17 U.S.C. § 512(a) (2000);
199. Religious Tech. Ctr. v. Netcom On-Line Commc'ns Servs., Inc., 907 F. Supp. 1361, 1372 (N.D. Cal. 1995) ("It would be especially inappropriate to hold liable a service that acts more like a conduit, in other words, one that does not itself keep an archive of files for more than a short duration."). It thus preserves immunity for ISPs that do no more than move packets of information on the Internet.
200. See H.R. REP. NO. 105-796, at 19-20 (1998) (Conf. Rep.).
201. See Urban & Quilter, supra note 8, at 675 (discussing § 512(a) takedown notices to ISPs acting as conduits).
202. To the extent there is concern about the possibility of liability, a blanket safe harbor or exemption from liability for these providers may be advisable.
203. This phrase is meant to capture traditional news organizations, such as television stations, newspapers, and magazines, that have editorial staff who review and make decisions about publication. The phrase excludes bloggers, Web-site operators, and all nontraditional newspersons. See infra Part VI.A.1.a (discussing such persons' legal status as publishers).
204. See Bartnicki v. Vopper, 532 U.S. 514, 525 (2001);
205. infra Part VII.A.2.
206. See Shoen v. Shoen, 5 F.3d 1289, 1293 (9th Cir. 1993) (recommending a focus on whether there was intent to disseminate the information to the public at the beginning of the news gathering process).
207. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 40 cmt. c (1995).
208. A key first step in filing suit against an alleged misappropriator is to obtain the identity of the individual. Cundiff, supra note 2, at 409.
209. See 17 U.S.C. § 512(h) (2000). The subpoena is granted on the condition that the identity will only be used in relation to the protection of the intellectualproperty rights of the copyright owner. Id. § 512(h)(2)(C).
210. See Recording Indus. Ass'n of Am., Inc. v. Verizon Internet Servs., Inc., 351 F.3d 1229, 1233 (D.C. Cir. 2003) ("We conclude from both the terms of § 512(h) and the overall structure of § 512 that ... a subpoena may be issued only to an ISP engaged in storing on its servers material that is infringing or the subject of infringing activity.").
211. One potential problem with obtaining subpoenas based on the Internet Protocol (IP) address of a computer is that the owner of the computer may not necessarily have been the alleged misappropriator. Someone else could have used the computer. See, e.g., Emily Umbright, DMCA Proof Internet Law Still Evolving, ST. LOUIS DAILY REC., Aug. 29, 2003 (discussing the music industry's subpoenas to alleged copyright infringers).
212. See generally Lidsky & Cotter, supra note 10, at 1594-98 (discussing tort actions against anonymous defendants).
213. The burden could be placed on the ISP or the alleged misappropriator to obtain a protective order against issuance of the subpoena, or to have it quashed.
214. The DMCA does not define "subscriber," but the context in which the term is used suggests that a subscriber is one who has an account or similar business relationship with the ISP. See 17 U.S.C. § 512(g)(2) (2000) (referring to "a subscriber of the service provider"). Thus, "subscriber" would not include, for instance, a person contributing to ongoing discussions in newsgroups.
215. Id. § 512(g)(3). The provisions do not require notice before the material has been removed; notice has been required only after it has been removed. See id. § 512(g)(2)(A).
216. By way of defense, the counternotice merely requires a statement under penalty of perjury that the material was removed by mistake or misidentification. Id. § 512(g)(3)(C).
217. Id. § 512(g)(2)(B).
218. Id. § 512(g)(2)(C). Material which has been taken down is apparently unlikely to be put back.
219. See Urban & Quilter, supra note 8, at 670-80 (surmising that a possible reason is because alleged infringers move the material to another hosting service).
220. See 17 U.S.C. § 512(g)(2)(C).
221. See supra Part V.
222. While it seems unfair, on some level, not to allow a response from the person who posted the allegedly trade-secret information, unless a substantively useful purpose for the counternotification can be identified, the end result would be a counternotice process without a function-one that serves no purpose other than to create paperwork or the appearance of providing due process.
223. Technical errors that are not defects in the substance of the notice, such as the misspelling of a name or a typographical error, may not be fatal.
224. See Urban & Quilter, supra note 8, at 667-78.
225. See, e.g., ALS Scan, Inc. v. Remarq Cmtys., Inc., 239 F.3d 619, 620, 626 (4th Cir. 2001) (reversing dismissal where the notice required that the newsgroup host delete an entire newsgroup and finding that notice was "substantially" compliant); Hendrickson v. eBay, Inc., 165 F. Supp. 2d 1082, 1090 (C.D. Cal. 2001) (finding that notice did not substantially comply with statutory notice provisions for failing to provide sufficient information to identify the allegedly infringing auction listings).
226. See, e.g., Computer Econ., Inc. v. Gartner Group, Inc., 50 F. Supp. 2d 980. 985 (S.D. Cal. 1999) (explaining the importance of identifying trade secrets); Utah Med. Prods., Inc. v. Clinical Innovations Assoes., Inc., 79 F. Supp. 2d 1290, 1313 (D. Utah 1999) (granting summary judgment against the plaintiff for failure to identify trade secrets).
227. See infra Part VI.A.
228. A plaintiff must generally plead (1) ownership of a trade secret, (2) misappropriation by the defendant, and (3) harm. See POOLEY, supra note 4, § 10.07[1].
229. Detailed descriptions of the trade secret are generally filed under seal and are subject to a protective order later in the litigation. See id.; FED. R. CIV. P. 26(b)(5) (allowing parties to describe the nature of information that is privileged without having to disclose or produce the privileged information itself).
230. It may also be wise to submit a takedown to the search engines, which may have already captured the information.
231. Wal-Mart may still have to contend with the fact that some people may have already accessed the information during the time that it was available. This is the kind of weakness that is inevitable when trade secrets appear on the Internet. However, the question of whether Wal-Mart may be able to enjoin its competitors from using the information is a separate issue that will necessitate a careful consideration of several factors, such as whether the information retained trade-secret protection despite having appeared on the Web site for a few hours and whether the competitor knew it was a trade secret when it came upon the information. See Rowe, supra note 3, at 29-37 (discussing a model for analyzing this kind of inquiry). Nonetheless, as part of the analysis, Wal-Mart's argument for retaining trade-secret protection will be strengthened by its having used the takedown provision instead of waiting about a week or more, at which point the information would, in all likelihood, be deemed generally known and thus unprotectable.
232. This hypothetical is loosely based on United States v. Genovese, 409 F. Supp. 2d 253, 254-55 (S.D.N. Y. 2005).
233. DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 26-27 (Cal. 2003) (Moreno, J., concurring).
234. See Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 225 (6th Cir. 1996) (refusing to enjoin publication of trade secrets improperly obtained in violation of a protective order and noting that "[t]he private litigants' interest in protecting their vanity or their commercial self-interest simply does not qualify as grounds for imposing a prior restraint").
235. For instance, a person may be privileged to disclose trade-secret information "that is relevant to public health or safety, or to the commission of a crime or tort, or to other matters of substantial public concern." RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 40 cmt. c (1995). Some whistleblowing statutes also privilege disclosures of trade secrets.
236. See, e.g., 5 U.S.C. § 2302(b) (8) (2000); N.Y. Lab. Law § 740 (McKinney 2002 & Supp. 2007).
237. For scholars favoring trade-secret protection over First Amendment rights, see, for example, Andrew Beckerman-Rodau, Prior Restraints and Intellectual Property: The Clash Between Intellectual Property and the First Amendment from an Economic Perspective, 12 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1, 5 (2001);
238. Epstein, supra note 29, at 1035-46;
239. Franklin B. Goldberg, Ford Motor Co. v. Lane, 16 BERKELEY TECH. L.J. 271, 271 (2001);
240. Adam W. Johnson, Injunctive Relief in the Internet Age: The Battle Between Free Speech and Trade Secrets, 54 FED. COMM. L.J. 517, 534 (2002).
241. For scholars advocating First Amendment rights over trade-secret protection, see, for example, David Greene, Trade Secrets, the First Amendment, and the Challenges of the Internet Age, 13 HASTINGS COMM. & ENT. L.J. 537, 542 (2001);
242. Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases, 48 DUKE L.J. 147, 229-31 (1998);
243. Volokh, supra note 43, at 739-48.
244. For a recent expression of a middle ground between the two camps, see, Pamela Samuelson, Principles for Resolving Conflicts Between Trade Secrets and the First Amendment, 58 Hastings L.J. 777 (2007).
245. Cf. In re Charter Commc'ns, Inc., 393 F.3d 771, 779-83 (8th Cir. 2005) (Murphy, J., dissenting) (reasoning that copyright infringement over the Internet is not protected expression).
246. See Cohen v. Cowles Media Co., 501 U.S. 663 (1991) (holding that contracts not to speak are enforceable);
247. Lidsky & Cotter, supra note 10, at 1595 (exploring anonymous speakers and tortious speech).
248. See Snepp v. United States, 444 U.S. 507 (1980);
249. Am. Motors Corp. v. Huffstutler, 575 N.E.2d 116 (Ohio 1991); Samuelson, supra note 181, at 780 (discussing why the First Amendment is often not applicable in trade-secret cases).
250. SeeFord Motor Co. v. Lane, 67 F. Supp. 2d 745 (E.D. Mich. 1999). The defendant operated a Web site with news about Ford and its products. Lane received confidential Ford documents from an anonymous source and initially agreed not to disclose most of the information. However, Lane eventually published some documents relating to the quality of Ford's products on his Web site because he believed that the public had a right to know. He did so despite knowing that the documents were confidential. Ford sought a restraining order to prevent publication of the documents, claiming the documents were trade secrets. The court acknowledged, without any discussion, that Ford could show Lane had misappropriated its trade secrets, but the court reversed the order on First Amendment grounds, concluding that considering an injunction to prevent Lane from publishing trade secrets was a prior restraint.
251. Id. at 747-50.
252. The First Amendment may not protect a person who tries to convert a trade secret for economic gain. See United States v. Genovese, 409 F. Supp. 2d 253, 256 (S.D.N.Y. 2005).
253. One interesting side note is whether ISPs would have a recognized First Amendment right to assist in the disclosure of a trade secret. As a practical matter, the issue will likely be moot. Since compliance with a takedown provision would provide safe harbor to ISPs, they are unlikely to raise the issue. Beyond that, however, they are at least one step removed from the disclosure-mere vessels or a medium to transmit the information-thus, assertion of a right to speak appears attenuated. They are therefore neither like the individual posting the trade secret nor like the press in the First Amendment analysis.
254. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 40 cmt. c (1995).
255. Cf. In re Verizon Internet Servs., Inc., 257 F. Supp. 2d 244, 258-64 (D.D.C. 2003)
256. ("[T]here is some level of First Amendment protection that should be afforded to anonymous expression on the Internet, even though the degree of protection is minimal where alleged copyright infringement is the expression at issue."), rev'don other grounds, 351 F.3d 1229, 1233 (D.C. Cir. 2003) (finding that the DMCA provided sufficient safeguards).
257. See, e.g., id.; Universal City Studios, Inc. v. Corley, 273 F.3d 429, 454-55 (2d Cir. 2001) (upholding an injunction under the anticircumvention provision and finding that the government has a substantial interest in preventing unauthorized access to encrypted copyrighted material). More generally, the Supreme Court has made clear that the First Amendment does not protect speech that infringes copyright.
258. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 555-60 (1985).
259. See generally RODNEY A. SMOLLA, 1 SMOLLA AND NIMMER ON FREEDOM OF SPEECH §§ 15:1, 15:2 (West 2007).
260. See Samuelson, supra note 181, at 780 (discussing why the First Amendment is often not applicable in trade secret cases).
261. See DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 13 (Cal. 2003).
262. UNIF. TRADE SECRETS ACT § 2(a) (amended 1985), 14 U.L.A. 619 (2005) ("Actual or threatened misappropriation may be enjoined.");
263. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 44 (1995). This legislative authority for granting injunctive relief is significant in the First Amendment analysis since the Supreme Court justices in the Pentagon Papers case (often cited for free-speech and trade-secret issues) were concerned about the lack of legislative authority to enjoin the press from publishing documents that potentially threatened national security. N.Y. Times Co. v. United States, 403 U.S. 713, 731-33 (1971) (White, J., concurring).
264. For cases providing injunctive relief without implicating the First Amendment, see, for example, Comprehensive Tech. Int'l, Inc. v. Software Artisans, Inc., 3 F.3d 730, 738-40 (4th Cir. 1993);
265. Metallurgical Indus., Inc. v. Fourtek, Inc., 790 F.2d 1195, 1197-98, 1208 (5th Cir. 1986);
266. SI Handling Sys., Inc. v. Heisley, 753 F.2d 1244, 1254-55 (3d Cir. 1985);
267. United States v. Genovese, 409 F. Supp. 2d 253, 256 (S.D.N.Y. 2005).
268. See, e.g., CBS Inc. v. Davis, 510 U.S. 1315, 1317-18 (1994) (holding that a preliminary injunction against a television network was a prior restraint);
269. Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 224-25 (6th Cir. 1996) (holding that a preliminary injunction against a magazine publisher was a prior restraint);
270. Religious Tech. Ctr. v. Lerma, 897 F. Supp. 260, 261-62 (E.D. Va. 1995) (characterizing a preliminary injunction against a newspaper as prior restraint).
271. See supra Part IV. D.
272. 44 Cal. Rptr. 3d 72 (Cal. Ct. App. 2006).
273. Id. at 106.
274. Id. at 76.
275. See id. at 102-03 n.21.
276. This appears to be an unsettled area of the law. Cf. Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362, 1369 (E.D. Va. 1995). The court held: Because there is no evidence that The Post abused any confidence, committed an impropriety, violated any court order or committed any other improper act in gathering information from the court file or down loading information from the Internet, there is no possible liability for The Post in its acquisition of the information.
277. Id. at 1369.
278. Some Supreme Court cases also support the proposition that the conduct of a publisher may be taken into consideration in deciding whether to grant First Amendment protection. See, e.g., Cohen v. Cowles Media Co., 501 U.S. 663, 669-70 (1991) (reasoning that the press may be restricted from publishing information it unlawfully obtains without offending the First Amendment); Seattle Times Co. v. Rhinehart, 467 U.S. 20 (1984) (upholding an order prohibiting a newspaper's publication of information obtained through the discovery process). Bartnicki v. Vopper, 532 U.S. 514 (2001) (addressing whether the media may be liable for using information unlawfully obtained by a third party);
279. MARC A. FRANKLIN, DAVID A. ANDERSON & LYRISSA BARNETT LIDSKY, MASS MEDIA LAW 536-47 (7th ed. 2005). But see Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 225 (6th Cir. 1996) (refusing to enjoin publication of trade secrets improperly obtained in violation of a protective order);
280. Ford Motor Co. v. Lane, 67 F. Supp. 2d 745, 753 (E.D. Mich. 1999) (refusing to enjoin publication where no fiduciary duty or confidentiality agreement exists).
281. This kind of regulation is likely to be deemed content neutral. See DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 11 (Cal. 2003) (finding that an injunction to protect statutorily created trade-secret rights was content neutral in that it promoted the goals of trade-secret law unrelated to the content). However, at least one commentator has argued otherwise.
282. See, e.g., Volokh, supra note 43, at 741 ("Even if the [trade-secret] law [as applied to third parties] is seen as content-neutral, it can't be defended as a time, place, and manner restriction, because it doesn't leave open ample alternative channels . . . .").
283. SeeKingsley Books, Inc. v. Brown, 354 U.S. 436, 440 (1957) (upholding a statute permitting prepublication injunctions of allegedly obscene books where the legal standards for issuing the injunction were clear and there were procedural safeguards in place).
284. See Thomas v. Chicago Park Dist., 534 U.S. 316, 321 (2002) (explaining that content-based restraints must contain such safeguards, such as expeditious judicial review, brevity of the restraint, and burden of proof on the censor). Content-neutral regulations do not require such heightened procedural safeguards.
285. Id. at 322.
286. The term prior restraint describes "administrative and judicial orders forbidding certain communications when issued in advance of the time that such communications are to occur." MELVILLE B. NIMMER, NIMMER ON FREEDOM OF SPEECH § 4.03 (1984) (emphasis added).
287. This is likely a "prior administrative restraint," which requires similar procedural protections as traditional prior restraints. See Ctr. For Democracy & Tech. v. Pappert, 337 F. Supp. 2d 606, 656-57 (E.D. Pa. 2004).
288. See generally Edith L. Pacillo, Note, Getting A Feminist Foot in the Courtroom Door: Media Liability for Personal Injury Caused by Pornography, 28 SUFFOLK U. L. REV. 123, 130-33 (1994) (discussing the continuum in free-speech analysis).
289. The Supreme Court has defined commercial speech as speech that does "no more than propose a commercial transaction." Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376, 385 (1973). Where the speech in question both proposes a commercial transaction and addresses social or political issues, it may nevertheless still be treated as commercial speech. See Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 67-68.
290. It seems that the very language utilized in commercialspeech cases does not necessarily fit the framework of trade-secret law. Unlike in trademark law, for instance, a trade-secret misappropriator (1) does not generally propose transactions with the secret other than trying to use it for self-gain (in which case it often will not be disclosed to others) and (2) the "economic motivation" of the misappropriator is often not for personal gain but rather to harm the trade-secret owner. Cf. Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 553 (5th Cir. 2001) (discussing economic motivation in the traditional context as direct economic gain to the speaker).
291. Recent data suggests that business entities comprise the majority of those utilizing the DMCA takedown-notice provisions. Urban & Quilter, supra note 8, at 649-50.
292. Alex Kozinski & Stuart Banner, Who's Afraid of Commercial Speech?, 76 VA. L. REV. 627, 638-48 (1990);
293. David F. McGowan, Comment, A Critical Analysis of Commercial Speech, 78 CAL. L. REV. 359, 381-410 (1990).
294. Core First Amendment speech generally relates to political, artistic, literary, historical, cultural, and social concerns. See generally Harry Kalven, Jr., The New York Times Case: A Note on "The Central Meaning of the First Amendment, " 1964 SUP. CT. REV. 191, 208. Merely because speech concerns a commercial subject does not necessarily make it commercial speech for First Amendment purposes. City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 420 (1993).
295. However, the speech must be evaluated as a whole, in context, and considering the discloser's motives. See generally Margreth Barrett, Domain Names, Trademarks and the First Amendment: Searching for Meaningful Boundaries, 39 CONN. L. REV. 973, 988 (2007) (discussing commercial and noncommercial speech in trademark law).
296. See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n, 447 U.S. 557, 562-64 (1980).
297. See id. at 562-63; Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 771-72 n.24.
298. Some scholars may take issue with a direct comparison of trade-secret law to copyright, patent, and trademark law given the debate about whether trade secrets are property. However, for the reasons expressed in the next Section, they are close enough to be considered apples (even if some are green and others are red).
299. See supra note 190 and accompanying text.
300. 532 U.S. 514 (2001).
301. Id. at 525.
302. Id. at 528 (quoting Smith v. Daily Mail Publ'g Co., 443 U.S. 97, 103 (1979)).
303. The intercepted conversation included discussion of blowing up the front porches of the homes of adversaries of the union. Id. at 518-19.
304. Id. at 525.
305. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 43 cmt. a (1995) ("Protection is available only against a wrongful acquisition, use, or disclosure of the trade secret.").
306. See id. § 40 cmt. b (1995); UNIF. TRADE SECRETS ACT § l(2)(i) (amended 1985), 14 U.L.A. 537 (2005).
307. Bartnicki, 532 U.S. at 519.
308. The federal wiretap law at issue in the case made it illegal to "intentionally disclose ... to any other person the contents of any wire, oral, or electronic communication, knowing or having reason to know that the information was obtained through the interception of a wire, oral, or electronic communication." 18 U.S.C. § 2511(1)(C) (2000) (emphasis added).
309. See discussion supra note 223.
310. Bartnicki, 532 U.S. at 533 (emphasis added).
311. Id. at 535-36 (Breyer, J. concurring).
312. In general, the trade-secret cases where First Amendment defenses have successfully shielded disclosures of allegedly newsworthy trade secrets have involved defendants who are journalists or news organizations. See, e.g., CBS Inc. v. Davis,
313. U.S. 1315, 1317 (1994) (involving CBS television network); Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 221 (6th Cir. 1996) (involving Business Week magazine); Religious Tech. Ctr. v. Lerma, 897 F. Supp. 260, 262 (E.D. Va. 1995) (involving the Washington Post).
314. One recent example of a similar event occurred in the spring of 2007 when a former Wal-Mart employee was sued by the company for, among other things, leaking trade secrets to the Wall Street Journal. Ann Zimmerman & Gary McWilliams, Wal-Mart's Firing of a Security Aide Bites die Firm Back, WALL ST. J., Apr. 9, 2007, at Al.
315. Cf. Ford Motor Co. v. Lane, 67 F. Supp. 2d 745, 753 (E.D. Mich. 1999) (holding that the First Amendment protects a third party from liability for disclosing trade-secret information because the third party was not under any duty not to disclose). This case suggests that the outcome would be different if the person posting were himself under a duty of confidence, such as an employee would be.
316. Id.;
317. Snepp v. United States, 444 U.S. 507, 509 (1980) (finding that a contract requiring a former Central Intelligence Agency agent to submit his memoirs for prepublication review was enforceable and not a prior restraint);
318. Boehner v. McDermott, 484 F.3d 573, 580-81 (D.C. Cir. 2007) (holding that the First Amendment did not shield a congressman under duty of confidentiality when he disclosed an unlawfully intercepted taped conversation to the media).
319. See generally Cynthia L. Estlund, Speech on Matters of Public Concern: The Perils of an Emerging First Amendment Category, 59 GEO. WASH. L. REV. 1 (1990); Volokh, supranote 43, at 747.
320. See Volokh, supra note 43, at 747.
321. See id. at 747-48 (criticizing courts' public concern analyses and conclusions).
322. SeeO'Grady v. Superior Court, 44 Cal. Rptr. 3d 72, 114 (Ct. App. 2006) (noting the concern in having courts decide what technological disclosures are newsworthy).
323. See, e.g., Coca-Cola Bottling Co. v. Coca-Cola Co., 107 F.R.D. 288, 289 (D. Del. 1985) ("The complete formula for Coca-Cola is one of the best-kept trade secrets in the world.").
324. See Bartnicki v. Vopper, 532 U.S. 514, 533 (2001) (suggesting that trade secrets are matters of purely private concern);
325. Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc., 472 U.S. 749, 762 (1985) (holding that a report about a company's bankruptcy is not a matter of public concern);
326. DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 16 (Cal. 2003) (holding that the posting of source code is not substantially related to a legitimate matter of public concern).
327. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 40 cmt. c (1995). Some whistleblowing statutes also privilege disclosures of trade secrets. See, e.g., 5 U.S.C.A. § 2302(b)(8) (West 2007); N.Y. Lab. Law § 740 (McKinney 2002 & Supp. 2007).
328. This kind of test would, at least to some degree, include consideration of the discloser's motives for posting the information. See Bunner, 75 P.3d at 15-16 (characterizing trade secrets that convey technical information as matters of private concern);
329. Estlund, supra note 232, at 37 (suggesting that Supreme Court cases "strongly suggest that expression arising out of and motivated by a workplace dispute or other controversy in which the speaker has a personal stake is presumptively not of legitimate concern to the public").
330. See Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D. Cal. 2004) (allowing postings of internal company e-mails regarding problems with voting machines under the fair-use rubric);
331. Dun & Bradstreet, All U.S. at 761-62 (holding that distributing a credit report from a business declaring bankruptcy was not of public concern);
332. Connick v. Myers, 461 U.S. 138, 147-48 (1983) (holding that a questionnaire concerning staff morale in a district attorney's office in the context of an employee's personal dissatisfaction with the office was not of public concern).
333. See supra notes 183-84 and accompanying text.
334. See supra Part VI.A. 1 .a.
335. See supra Part VI.A.2.
336. See supra Part VI.A.2.a.
337. See supra Part VI.A.2.b.
338. See, e.g., DVD Copy Control Ass'n, Inc. v. Bunner, 75 P.3d 1, 14 (Cal. 2003) ("[P]rohibiting the disclosure of trade secrets acquired by improper means is the only way to preserve the property interest created by trade secret law and its concomitant ability to encourage invention.").
339. For those cases espousing a property view, see, Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1002 (1984);
340. Chicago Lock Co. v. Fanberg, 676 F.2d 400, 404 (9th Cir. 1982);
341. E.I. du Pont de Nemours & Co. v. United States, 288 F.2d 904, 912 (Ct. Cl. 1961);
342. Peabody v. Norfolk, 98 Mass. 452, 458 (1868);
343. Den-Tal-Ez, Inc. v. Siemens Capital Corp., 566 A.2d 1214, 1228 (Pa. Super. Ct. 1989).
344. For cases espousing a breach of confidence view, see, E.I. du Pont de Nemours Powder Co. v. Masland, 244 U.S. 100, 102 (1917);
345. Eastman Co. v. Reichenbach, 20 N.Y.S. 110, 115-16 (1892);
346. RESTATEMENT (FIRST) OF TORTS § 757 cmt. a (1939).
347. While it is true that trade-secret law protects against breaches of confidence, in order to succeed on a misappropriation claim, a trade-secret owner must prove that the information rises to protectable status as a trade secret. The breach alone, without the property-like protectable status, is insufficient. See Lariscey v. United States, 949 F.2d 1137, 1141 (Fed. Cir. 1991) ("The laws governing ownership and use of unpatented property and unpublished information thus derive from theories of property, adapted to achieve fairness in commercial relationships ....") (internal citations omitted). For discussions on treating protection of information as property,
348. see generally Andrew Beckerman-Rodau, Are Ideas Within the Traditional Definition of Property?: A Jurisprudential Analysis, 47 ARK. L. REV. 603, 624 (1994).
349. See, e.g., Ruckelshaus, 467 U.S. at 1003-04 (exposing a secret formula could be an unconstitutional taking);
350. Chicago Lock Co., 676 F.2d at 404;
351. E.I. du Pont de Nemours, 288 F.2d at 912 (sale of secret process invoked capital-gains tax);
352. Bunner, 75 P.3d at 13 (endorsing the property-rights view of trade-secret law);
353. Teller v. Teller, 53 P. 3d 240, 247-49 (Haw. 2002) (trade secrets are property for division in marital estate);
354. Peabody, 98 Mass. at 458;
355. Den-Tal-Ez, Inc., 566 A.2d at 1228.
356. RESTATEMENT (THIRD) OF UNFAIR COMPETITION §39 cmt. d (1995) ("It is not possible to state precise criteria for determining the existence of a trade secret. The status of information claimed as a trade secret must be ascertained through a comparative evaluation of all the relevant factors, including the value, secrecy, and definiteness of the information as well as the nature of the defendant's misconduct.");
357. See MELVIN F. JAGER, 1 TRADE SECRETS LAW § 1:1 (2007).
358. Forty-five states and the District of Columbia have adopted the Uniform Trade Secrets Act ("UTSA"), which lends some uniformity in defining trade secrets and misappropriation. See Uniform Law Commissioners, A Few Facts About the Uniform Trade Secrets Act, http://www.nccusl.org/update/ uniformact_factsheets/ uniformacts-fs-utsa.asp (last visited Nov. 9, 2007).
359. See Urban & Quilter, supra note 8, at 681 (discussing failure of some notice senders to understand the parameters of copyright law).
360. See generally Tomas A. Lipinski, The Developing Legal Infrastructure and the Globalization of Information: Constructing a Framework for Critical Choices in the New Millennium Internet - Character, Content and Confusion, 6 RICH. J.L. & TECH., 19, 11 22, 30 (Winter 1999-2000), http://www.richmond.edu/jolt/ v6i4article2.html (discussing how copyright law and trademark law have had to adapt to new technologies);
361. Richard H. Chused, Rewrite Copyright: Protecting Creativity and Social Utility in the Digital Age, ISRAEL L. REV., Fall 2005, at 80, 83 (discussing responses to new technological developments).
362. SeeDVD Copy Control Ass'n, Inc. v. Bunner, 10 Cal. Rptr. 3d 185, 190 (Cal. Ct. App. 2004) (discussing campaign to spread alleged trade-secret material in retaliation against plaintiffs lawsuit);
363. Cundiff, supra note 2, at 410-11 (noting that filing a suit can lead to a "chatting frenzy on the Internet").
364. Cf. supra note 122 and accompanying text (discussing the Chilling Effects Project).
365. Daniel R. Cahoy, Comment, New Legislation Regarding On-Line Service Provider Liability for Copyright Infringement: A Solution in Search of a Problem?, 38 IDEA 335, 354 (1998).
366. See In re Charter Commc'ns, Inc., 393 F.3d 771, 777 (8th Cir. 2005);
367. Recording Indus. Ass'n of Am., Inc. v. Verizon Internet Servs., Inc., 351 F.3d 1229, 1238 (D.C Cir. 2003).
368. Verizon Internet Servs., 351 F.3d at 1238.
369. See, e.g., Rossi v. Motion Picture Ass'n of Am. Inc., 391 F.3d 1000, 1002 (9th Cir. 2004) ("After receiving notice from his ISP that his website would be shut down, Rossi found a new ISP to host [the material].");
370. Urban & Quilter, supra note 8, at 679-80.
371. See, e.g., Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1097 (W.D. Wash. 2004) (discussing vendor whose account was terminated after a takedown notice but then who opened at least two different vendor accounts under slightly different names).
372. Cundiff, supra note 2, at 405.
373. See generally Matthew Fagan, Note, Can You Do a Wayback on That? The Legal Community's Use of Cached Web Pages in and out of Trial, 13 B.U.J. SCI. & TECH. L. 46, 50-55 (2007).
374. See, e.g., Internet Archive: Wayback Machine, http://www.archive. org/ web/web.php (last visited Oct. 13, 2007).
375. Niva Elkin-Koren, Making Technology Visible: Liability of Internet Service Providers for Peer-to-Peer Traffic, 9 N.Y.U. J. LEGIS. & PUB. POL'Y 15, 17 (2006).
376. See, e.g., Larry Greenemeier, Beware P2P Networks With a Tunnel To Confidential Data, Study Wams, INFO. WK., Mar. 15, 2007, http.7/ www.informationweek.com/news/showArticle.jhtml7articleID = 199600527 (discussing blocking company ports to prevent access to P2P networks and tracking potentially leaked data).
377. For instance, movie studios, frustrated by hackers discovering and posting passwords on the Internet to enable copying of DVDs, have a new strategy. If hackers post stolen passwords on the Web, the studios can change the passwords, disabling the ability to play the DVD unless the consumer downloads updated software with the new password. Keith Winstein, Consumers May Get Caught in Piracy War-Strategy To Thwart Movie Copying Could Frustrate Innocent Users, WALL S.T. J., July 5, 2007, at B3.
378. Realization of such a scenario may be closer than one would think. See, e.g., Kevin J. Delaney, Brooks Barnes & Matthew Karnitschnig, Policing Web Video with 'Fingerprints, ' WALL ST. J., Apr. 23, 2007, at Bl (reporting on policing web video with fingerprints to detect copyright infringement).
379. See, e.g., Four Seasons Hotels & Resorts v. Consorcio Barr, 267 F. Supp. 2d 1268, 1301 (S.D. Fla. 2003) (discussing steps to protect plaintiffs computer network);
380. Wrap-N-Pack, Inc. v. Eisenberg, No. 04-cv-4887 (DRH)(JO), 2007 WL 952069, at *9 (E.D.N.Y. Mar. 29, 2007) (illustrating plaintiffs "significant safeguards" to protect its customer information).
381. For discussion of various technologies that are currently available, see Meir S. Hornung, Think Before You Type: A Look at Email Privacy in the Workplace, 11 FORDHAM J. CORP. & FIN. L. 115, 125-26 (2005);
382. Cundiff, supra note 2, at 413-18; Daniel W. Park, Trade Secrets, the First Amendment, and Patent Law: A Collision on the Information Superhighway, STAN. J.L. BUS. & FIN., Autumn 2004, at 46, 60.
383. See Urban & Quilter, supra note 8, at 676 (reporting on the large number of § 512 notices that targeted material outside the United States).
384. Compare Cisco Sys., Inc. v. Huawei Techs. Co., 266 F. Supp. 2d 551, 555 (E.D. Tex. 2003) (applying Texas trade-secret law in granting a worldwide preliminary injunction on a misappropriation claim but noting that Chinese trade-secret law may have been applicable), with BP Chems. Ltd. v. Formosa Chem. & Fibre Corp., 229 F.3d 254, 266 (3d Cir. 2000) (reversing grant of preliminary injunction on a trade-secret-misappropriation claim and finding that Taiwan, not the United States, would have a greater interest "in setting the standards that govern the conduct of its own citizens regarding intellectual property that is present within its borders.")
385. 18 U.S.C. § 1837(2) (2000).
386. Id. § 1837(1).