Protecting Your Business and Your Competitive Advantage

Businesses invest significant resources in the development of sales and customer data, product research, and novel marketing strategies. To maintain the competitive advantage provided by that investment, businesses trust employees to safeguard the information and to refrain from using it on behalf of a competitor. That trust can be violated. Employees often leave for “better opportunities” with competing companies and they take confidential and trade secret information with them. The lawyers in our Non-Competes and Trade Secrets group recognize the potential for misuse and help companies protect their businesses, their employees, and their customers from unlawful raiding.

Services

We advise companies to take proactive steps to protect business assets when hiring, terminating or laying off employees. Our intellectual property lawyers secure and enforce patents, trademarks and copyrights, and counsel clients on how to avoid infringement of the rights of other companies. When necessary, our team responds immediately to seek prompt relief from the courts to protect your confidential information, employees and customers. In short – we work with companies at every stage to protect valuable business assets.

Preventative Planning

Your company’s confidential information is critical to your success. Consequently, it is important to adopt policies, procedures and contracts that protect your confidential information before someone misuses it. If you want something to remain a secret – you must treat it like one. This requires affirmative action from you.

Our preventative work focuses on the preparation of employee agreements covering such areas as confidential information, return of confidential information and other property, inventions, and copyright protection. This includes the use of appropriate non-competition or anti-solicitation agreements designed to protect against unfair competition.  We also provide practical advice and counsel regarding how to protect confidential and trade secret information from unauthorized use and disclosure by way of instituting appropriate internal procedures and policies, and other measures.

Employees in Transition

Many of our clients regularly call to find out what rights they have as to a departing employee, and what risks they may have in hiring a particular individual. Addressing these questions from the beginning helps minimize the potential for future litigation of claims such as breach of loyalty, tortious interference with contract, or breach of contact (arising from non-competition, anti-solicitation and/or confidentiality agreements).

Crisis Management

When, despite your best preventative efforts, a former employee or competitor is using confidential information, raiding your employees, or stealing your customers, immediate action is needed.

We have extensive experience seeking and defending temporary restraining orders and injunctions relating to use of confidential and trade secret information by former employees and competitors. These lawsuits most often focus on employees in transition, particularly with regard to the enforceability of non-compete and anti-solicitation agreements. Our team promptly evaluates these claims and acts accordingly to protect your valuable business assets and pursue monetary damages as necessary.

Representative Experience

Counseling/Training

• We routinely advise and develop policies, procedures and contracts that protect confidential information.
• We draft employment contracts, employee agreements, non-competition, and confidentiality agreements.
• We advise employees and businesses on enforceability of non-compete, anti-solicitation and confidentiality agreements and best practices for enforcing and complying with such agreements.
• We counsel and train clients on effective use of technology in the workplace, avoiding pitfalls and liability as it relates to possible misuse of confidential information by departing employees.

Non-Competition/Anti-Solicitation Litigation

• We represented a manufacturer in seeking and obtaining a temporary restraining order, prohibiting an engineer from working for a competitor in violation of his non-compete agreement. The manufacturer was about to roll out a revolutionary new design and the engineer had worked on the new product. The Judge issued the restraining order which successfully kept the engineer from working for the competitor for over six months. During that time the company was able to roll out the new product and secure the market lead.
• We represented an employee and his new employer, a technology consulting/recruiting company, who were sued in state court by the employee’s former employer for allegedly violating his non-compete agreement. After limited discovery, the former employer agreed to a favorable resolution which permitted the employee to continue to work for his new employer.
• We represented a provider of physical therapy services in action by a competitor. The competitor alleged tortious interference with contract, fraud and other business torts. We successfully obtained dismissal on summary judgment.
• We represented an individual and his new employer in an action brought by the individual’s former employer. The former employer alleged violation of a non-compete agreement, tortious interference with contract and defamation. The case was tried before a jury and our clients prevailed.
• We defended a national insurance brokerage and sales representatives against claims of tortious interference, breach of contract, breach of duty of loyalty, and breach of anti-solicitation clause, and obtained a successful resolution for our clients.
• We commenced commercial arbitration for a Minnesota insurance brokerage to enforce non-compete and anti-solicitation agreement, and for breach of fiduciary duty and duty of loyalty. We obtained an arbitrator ruling in favor of our client on all claims.
• We represented a new employer against claims of tortious interference with a non-compete contract and unfair competition when it hired employees who had quit or were terminated by their former employer, but failed to disclose non-compete to the new employer.
• We investigated a claim of employee theft of trade secrets, counseled the employer through the termination process, brought suit to enforce a non-compete, and successfully negotiated the entry of a stipulated permanent injunction against the employee.
• We filed a non-competition TRO action on behalf of a developer of cutting-edge medical-imaging technologies and software. The client was awarded a TRO against the former employees and any person or entity working in active participation or concert with them.
• We served as lead defense counsel in a copyright infringement case in Minnesota federal court. We successfully moved the Court to dismiss the case at the pleading stage.

Patent/Trade Mark Litigation

• We brought a patent infringement lawsuit in federal court in Minnesota against a competing glass company for infringement of patents covering protective coating for glass.
• We defended a manufacturing company in a trademark infringement case brought by its primary competitor. After a three day trial, we convinced the trial court judge that the client had a license to use the trademarks.
• We successfully represented a company against one of its former producers. The former producer had secretly developed and begun selling a competing product, in violation of the parties’ Production Agreement. At trial, the jury awarded the client damages for sales of the competing product, enjoined further production and sale of the competing product, and the client was awarded the patent rights associated with the competing product.
• We defended a record label in an opposition proceeding before the Trademark Trial and Appeal Board. We helped the client negotiate a favorable settlement that allowed the client to continue to use its trademark in its desired field.

Practical Takeaway

Take proactive steps to protect your business assets – including your confidential and trade secret information, customers and employees.

Bios

EMPLOYMENT & LABOR

Litigation

Matthew T. Boos
David P. Bunde
James E. Dorsey
Emily E. Duke
Benjamin J. Hasbrouck
Krista A.P. Hatcher
Sten-Erik Hoidal
David R. Marshall
Norah Olson Bluvshtein
Jeffrey W. Post
Richard A. Ross
Joseph M. Sokolowski
Lindsay J. Sokolowski
Teresa M. Thompson
Todd A. Wind

Counseling

Robert C. Boisvert
Ingrid N. Culp
Mary M. Krakow
Anne M. Radolinski
Karen G. Schanfield

INTELLECTUAL PROPERTY

Litigation

Emily E. Duke
Grant D. Fairbairn
Lora M. Friedemann
Laura L. Myers
Kurt J. Niederluecke
Charles D. Segelbaum
Adam R. Steinert

Transactional

Thomas B. Archbold
Ann M. Ladd
David C. West