How to identify infringement of trade secrets? Things to know in the workplace
2024-06-04
After employees have mastered the key information of the company, they start anew and establish similar companies to become competitors of their old employers; How to define the relationship between normal talent flow and employee infringement of trade secrets due to sales personnel jumping jobs in groups, resulting in the leakage of company trade secrets? Can adopting non compete clauses alone effectively protect business secrets of enterprises? Recently, the People's Court of Xicheng District, Beijing held a press conference on "Typical Cases of Employees' Job hopping and Infringement of Trade Secrets", releasing typical cases to clarify legal issues related to labor disputes and infringement of trade secrets, to clear obstacles for enterprises to protect trade secrets in accordance with the law, and to convey legal warmth to protect workers' freedom to choose their jobs. Resignation and taking away customer information constitutes infringement of trade secrets. A certain office building is a contracted customer of a cleaning company, which provides cleaning services for the office building, but the contract between the two parties has not been renewed after its expiration. In November 2021, the office building signed a new cleaning service contract with another company, which will continue to provide cleaning services for the office building. The cleaning company found that in the contract signed between a certain office building and a new company, in addition to basic information such as the signing party, signing time, and payment account, the main terms such as service location, number of service personnel, service fee standards, and breach of contract liability are consistent with the cleaning service contract signed between the cleaning company and a certain office building. At the same time, the personnel who provide cleaning services for the new company are also the original service personnel of the cleaning company. According to another investigation, Mr. Guo, a shareholder of the new company, is the husband of Ms. Chang, a former employee of the cleaning company. Ms. Chang used to be the Operations Manager of a cleaning company, responsible for bidding and customer contract renewal in the operations department. The labor contract, confidentiality agreement, and employee handbook signed between the cleaning company and Ms. Chang stipulate that Ms. Chang shall strictly keep confidential any trade secrets of the company that she becomes aware of due to her identity, position, occupation, or technical relationship. Therefore, the cleaning company believes that Ms. Chang and her husband Mr. Guo, as well as the new company signed with the office building, have infringed on their trade secrets, so they filed a lawsuit in September 2022. After trial, the court ruled that the defendant Ms. Chang and the new company should compensate the cleaning company with an economic loss of 16000 yuan, and Mr. Guo should bear joint liability for this. The judge stated that when determining whether an employee has infringed on a company's trade secrets, the court follows the determination rule of "constituting trade secrets+possibility of contact+substantial similarity - legal source". In this case, Ms. Chang served as the Operations Manager of a cleaning company and may have access to the company's cleaning service contract information. Ms. Chang and Mr. Guo are husband and wife, and Mr. Guo is the sole shareholder of the new company. The cleaning company was unable to renew the contract, and the contract content of the new company that replaced her is basically consistent with the previous contract content of the cleaning company, and there is also overlap in the personnel providing services between the two parties. In the absence of evidence to the contrary, it is difficult to say that the timing and content of the new company's signing of the cleaning service contract were coincidental. Based on this, the court determined that the new company continued to use the trust generated by the cleaning company and a customer's office building regarding service quality. Therefore, the list of involved customers has commercial value, and the cleaning company has taken corresponding confidentiality measures by signing confidentiality agreements and other means. Therefore, customer information belongs to trade secrets under the Anti Unfair Competition Law. Ms. Chang violated the requirements of the cleaning company for maintaining trade secrets by disclosing or allowing others to use the trade secrets she held. The new company, knowing or should have known that Ms. Chang's actions were illegal, still obtained and used the trade secrets. Therefore, Ms. Chang and the new company jointly infringed on the trade secrets of the cleaning company. Mr. Guo is the sole shareholder of the new company and has failed to prove that his assets are independent of the new company's assets. Therefore, he should bear joint and several liability for the company's debts. The plaintiff, a technology company, filed a lawsuit claiming that Mr. Wang was a former employee of the technology company and was responsible for coordinating the cooperation between the technology company and customer C. Later, Mr. Wang informed the technology company and customer C that the cooperation was terminated and the contract would not be renewed. Mr. Wang also submitted his resignation, and during his tenure, he signed a confidentiality agreement with the technology company. After a period of time, the technology company discovered that after Mr. Wang resigned, the business of client C did not stop. Instead, they chose other partner company B from 2017 and continued to do so until August 2019. Company B contacted customer C through Mr. Wang's intermediary. The new partner of client C, company B, is actually a company jointly operated by Mr. Wang and his friends. In fact, client C was not aware that the technology company had not renewed the contract because Mr. Wang was still the contact person and approved the contract with the technology company's name after the contract name, causing client C to mistakenly believe that company B was an affiliated company of the technology company, which led to the renewal of the contract. The technology company believes that Mr. Wang violated his confidentiality obligations by unauthorized disclosure of specific important customer information to Company B, and jointly used the technology company's trade secrets with the company. As a competitor in the same industry, Company B, despite knowing the illegality of Mr. Wang's behavior, still colluded, conspired, and illegally used the trade secrets of the technology company, constituting unfair competition. In January 2021, Mr. Wang and Company B were sued in court. Mr. Wang argued that the information provided by the technology company regarding customer C is not a trade secret, and the technology company has not taken any confidentiality measures; The information of customer C can be obtained through public channels and has no potential value. Company B argues that it obtained information about customer C through independent channels, and the contracting parties are different, so there is no competitive relationship between them. After trial, the court found that Mr. Wang had signed a confidentiality agreement and knew that the customer's information belonged to trade secrets. His actions with Company B caused Customer C to misunderstand and jointly infringed on the trade secrets of the technology company. The court ordered the two defendants to cease their infringement behavior, publish a statement, eliminate the impact, and compensate for a loss of 3.5 million yuan and reasonable expenses of 50000 yuan. The judge said that in the case of "impersonating" the original unit to sign a contract and infringe on trade secrets, after employees obtain and disclose trade secrets, the counterparty to the contract is completely mistaken. This business behavior that violates the principle of good faith should be regulated. In this case, firstly, there is a confidentiality agreement between the technology company and Mr. Wang, and the cooperation agreement signed between the technology company and customer C also includes a confidentiality clause, limiting the contract contact person to Mr. Wang and further limiting the scope of information knowledge through the use of the technology company's work email. The relevant measures of the technology company reflect its willingness to maintain confidentiality and the adoption of confidentiality measures. Therefore, the court determines that the technology company has completed the burden of proof for confidentiality. Mr. Wang is aware of the trade secrets of the technology company and the agreements between both parties regarding trade secrets. He should assume confidentiality obligations in accordance with the contract and the principle of good faith. His behavior of deceiving the technology company and causing losses to the company's interests has been terminated. Secondly, in terms of determining infringement behavior, Company B is unable to provide evidence of the communication channels and cooperation process with Customer C, and it can be seen from the relevant contract content and emails that Company B contacted the relevant parties of Customer C through one of its operators, Mr. Wang, and approved the contract with the name of the technology company after the name, leading to a misunderstanding of the cooperation partner Customer C. Therefore, the court has determined that Mr. Wang disclosed the trade secrets of the technology company to Company B during his tenure, and jointly used them with Company B to obtain improper commercial benefits. Mr. Wang and Company B's actions violated the principle of good faith and contractual agreements, jointly infringing on Company A's trade secrets, and should bear legal responsibility for joint infringement. The "non compete" clause is too simple, and the rights protection claim has been rejected. The plaintiff, a certain trading company, had a labor contract relationship with Mr. Zhou from August 2017 to October 2019. Mr. Zhou serves as a salesperson in the company, and the labor contract signed by both parties clearly stipulates a "non compete" clause. Customer information, procurement channels, company costs, etc. are all trade secrets. Mr. Zhou must abide by confidentiality regulations and cannot disclose them to the outside world without consent. It is absolutely prohibited to use these trade secrets for personal or personal gain. Mr. Zhou has a non compete obligation and is not allowed to operate on his own or work in other employers that compete with commercial companies in the same product or business. In October 2019, Mr. Zhou resigned from the trading company. The post trading company discovered that Mr. Zhou and his spouse jointly established a sales company in 2006. After Mr. Zhou resigned, he provided the sales company with customer information obtained during his tenure at the trading company. So the trading company sued Mr. Zhou and the sales company to the court, demanding a cessation of infringement and compensation of 45000 yuan for economic losses. After trial, the court found that firstly, the scope of business information that the plaintiff's trading company wanted to protect as trade secrets was not clear. Secondly, the defendant's sales company was established before Mr. Zhou joined the trading company. Finally, the plaintiff's trading company's confidentiality measures only included the "non compete and confidentiality" clause in the labor contract. Taking into account the above factors, the court ultimately ruled to reject the plaintiff's lawsuit request from the trading company. The judge stated that according to Article 9 of the Anti Unfair Competition Law, trade secrets refer to technical information, business information, and other commercial information that are not known to the public, have commercial value, and have been subject to corresponding confidentiality measures by the rights holder. According to Article 5 of the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases Involving Infringement of Trade Secrets, the people's court shall determine whether the right holder has taken corresponding confidentiality measures based on factors such as the nature of trade secrets and their carriers, the commercial value of trade secrets, the identifiable degree of confidentiality measures, the correspondence between confidentiality measures and trade secrets, and the confidentiality willingness of the right holder. In practice, trade secrets are not meant to be kept by enterprises, and technology and business information that enterprises have not taken measures to keep confidential cannot constitute trade secrets. In cases where trade secrets cannot be limited, adopting only a single and general confidentiality measure poses significant risks in trade secret rights protection cases. Therefore, operators must clarify their technical and business information during the business process, and take appropriate and appropriate measures to protect it. Dong Linming, Vice President of the Fourth Civil Court (Intellectual Property Trial Division) of Xicheng District Court, reminds that business operators should improve their trade secret protection system in accordance with the law, set trade secret levels, clearly define the scope and authority of employees at different levels and positions to access corresponding levels of trade secrets, and attach confidentiality labels to the confidential carriers of enterprises; Strengthen internal trade secret protection measures throughout the entire process, clearly stipulate confidentiality clauses with employees in labor contracts, provide confidentiality education to new employees, and clarify the handover of confidential documents and materials item by item when handing over work to departing employees; We attach great importance to the protection of trade secrets in external business dealings. Employees should be informed in advance and undergo internal review of confidential information that may be involved in external communication. We remind employees to avoid disclosing company trade secrets. If it is necessary to provide confidential documents and materials to third parties, confidential information should be declassified to prevent the leakage of company trade secrets to the greatest extent possible. Employees are reminded to abide by legal and agreed confidentiality obligations, whether during employment, upon resignation, or after resignation. (Lai Xin She)
Edit：Liling Responsible editor：Jia Jia
Source：http://rmfyb.chinacourt.org
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