The trouble is Utah law doesn’t distinguish between a misappropriator’s venial motives. When someone steals a trade secret and discloses it to a competitor he effectively assumes for himself an unrestricted license in the trade secret. And that bears its costs. After all, what value does a trade secret hold when it’s no longer a secret from the trade? The misappropriator may act with a wish to line his pockets or satisfy a vendetta or for some other purpose still. All the same Utah’s trade secret statute holds him to account for the full value of the license he arrogated to himself. Just as the district court held.
Mr. Kirby’s argument otherwise takes various but related forms. In its first and most ambitious guise Mr. Kirby insists a trade secret plaintiff cannot seek and obtain a “reasonable royalty” measure of damages — as StorageCraft did in this case — without proving the misappropriating defendant made commercial use of the secret. He presses this same essential point in at least three different ways — suggesting he is entitled to judgment as a matter of law because the record contains no evidence of commercial use, claiming that a new trial is warranted for the same reason, and arguing the district court erred by failing to give a jury instruction requiring proof of commercial use. But however the argument is dressed, underneath lies the same problem: Utah’s trade secret statute, the law governing Mr. Kirby’s case, expressly allows a reasonable royalty measure of damages when the misappropriator uses or discloses the trade secret. And no one disputes that Mr. Kirby did at least that — disclosing the secret to NetJapan.
Judge(s): Neil M. Gorsuch
Jurisdiction: U.S. Court of Appeals, Tenth Circuit
Related Categories: Damages , Technology , Torts , Trade Secret
|Circuit Court Judge(s)|
|Plaintiff Lawyer(s)||Plaintiff Law Firm(s)|
|Thomas Karrenberg||Anderson & Karrenberg PC|
|Heather Sneddon||Anderson & Karrenberg PC|
|Defendant Lawyer(s)||Defendant Law Firm(s)|
|Richard Ensor||Vantus Law Group PC|