Trade Secret or Copyright: Take Your Pick

On August 7, 2013, in Copyrights, Trade Secrets, by Brian A. Hall

UnIntellectual Property (UnIP): Trade Secret for Jewelry Designs Identified in a Copyright

I recently wrote on this blog an UnIntellectual Property post about case wherein alleged trade secret information was disclosed in a patent and thus passed into the public domain and could not be protected as a trade secret any longer.  Well, a recent case confirms that the same holds true for a copyright.  Plaintiff sued Defendant for, among other things, trade secret misappropriation relative to jewelry designs.  The United States District Court for the Southern District of New York has held that “the fact that the design drawings were available to the public and that pieces constructed from such designs were sold to the public does preclude the designs themselves from qualifying as trade secrets for the purposes of a misappropriation cause of action.”  In doing so, the Court cited a N.D. Illinois case that held a copyrighted work was not a trade secret because “it was readily available through the Copyright Office.”  Thus, the Court granted the Defendant’s motion to dismiss “insofar as it is asserted with respect to the physical jewelry designs that were publicly disclosed via sales of the pieces and registration of the designs with the Copyright Office.”  The Court did not, however, dismiss Plaintiff’s trade secret misappropriation claim as it relates to “proprietary “products, formulations, industrial processes, internal corporate documents, planning and strategy documentation, financial and accounting information, customer contact lists and information, [and] supplier contact lists and information.””

Business owners need to understand the differences between the types of intellectual property (including copyrights and trade secrets), and I obviously recommend the help of an intellectual property attorney (wink wink).  There are reasons to pursue a copyright over a trade secret, and vice versa.  It is worth noting that you may be able to acquire both copyright and trade secret protection, especially for computer programs, but you need to follow specific steps when registering your copyright in order to do so, as outlined by the United States Copyright Office.  Know your IP or wind up with UnIP.
Helios Int’l S.A.R.L. v. Cantamessa USA, Inc., 12 CIV. 8205, 2013 WL 3943267 (S.D.N.Y. July 31, 2013).



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