UnIntellectual Property (UnIP): Trade Secret for Business Goals (among other items)

This is a dispute in the United States District Court for the Southern District of New York over intellectual property pertaining to marketing and advertising analytics.  While this case involves patents and other intellectual property, I am focusing on TRA Defendant’s countersuit and alleged trade secrets, namely:

(1) Media TRAnalytics’—TRA’s product—speed, reliability, scalability and performance;
(2) TRA’s client lists and client interactions,
(3) TRA’s strategic plans,
(4) TRA’s product positioning; and,
(5) TRA’s capital structure, financials, financing proposals target investor list, and offers to acquire or merge the company.53
The Plaintiff, WPP Companies, argue that the trade secrets alleged by TRA: (1) are insufficiently detailed to merit trade secret protection; (2) have been publicly disclosed; and (3) have not been used by the WPP Companies.  One of the bases for the WPP Companies’ motion is that, rather than identifying its trade secrets with specificity, TRA instead cited to vast page-ranges in its omnibus discovery materials. Although in its opposition to this motion, TRA has narrowed the scope of its trade secrets to a more limited set of documents, the Court held that “it is impermissible for TRA to wait until summary judgment to narrow the documents allegedly describing its trade secrets.”  More importantly, the Court held that “the documents now identified by TRA fail to evidence protectable trade secrets, and/or use of those trade secrets by the WPP Companies.”
In particular, the Court rejected each of the above trade secrets for the following reasons:
(1) “Regarding the TRAnalytics Secret, the record shows that TRA disclosed most of the properties of TRAnalytics that it now apparently claims as a trade secret—e.g., its use of APIs to handle legacy clients—and there is no evidence in the record that the Accused Products made use of any of the technical information alleged by TRA.For example, the Accused Products make use of an Oracle database, while TRAnalytics uses Kognitio’s data warehousing capabilities.”
(2) “The Clients Secret fares no better.  The WPP Companies have produced abundant evidence that TRA disclosed its clients at every turn.  In any event, it stretches credulity to suggest that TRA’s client list is a trade secret. There is no evidence that TRA undertook the type of effort to develop it that would render such a list proprietary; and “ ‘widespread canvassing of an obvious and highly competitive market’ is insufficient to warrant trade secret protection.”  Finally, TRA has submitted no evidence indicating that the WPP Companies used its client list. It is doubtful that a world-spanning conglomerate like the WPP Companies would have much use for a list of TRA’s clients—in the pipeline or otherwise—and, as the WPP Companies point out, “[t]he identified information is dated February or March 2009, more than a year before mid–2010, when TRA alleges Kantar began improperly using TRA information[,]” such that the Clients Secret would be stale prior to the WPP Companies’ alleged use.
(3) “The Strategy Secret fails as a matter of law. Based on the documents submitted by TRA, the Strategy Secret consists of little more than the aspirations of a company struggling to achieve revenue traction. For example, TRA accuses the WPP Companies of misappropriating its secret plan to perform a “course correction” with the “focus” of “build[ing][a] platform for [one hundred million dollars in] revenues….”  This is assuredly a worthy goal. However, “information consisting simply of business possibilities or goals is not a trade secret.”  Thus, the Strategy Secret is not a protectable trade secret.”
(4) “The Positioning Secret likewise fails as a matter of law. “Price lists, product samples, and ‘marketing plans’ are all items that are not, as a matter of law, protected as trade secrets.”  The documents that TRA alleges constitute the Positioning Secret fit comfortably within this rule. For example, the table attached to the March 2009 Memo merely compares pertinent features of TRAnalytics—that were publicly disclosed—to features of competitors that were public knowledge. The remainder of the documents submitted by TRA in support of the Positioning Secret are, likewise, either drawn from public information, or merely marketing documents. As such, the Positioning Secret fails as a matter of law.”
(5) “Finally, the information that allegedly constitutes the Financial Secret was publicly disclosed by TRA.  Thus, in the end, even if TRA were not now precluded from supplementing its discovery responses in order to add specifics to its trade secrets claims, it would merit dismissal.
This Court seemed perturbed by the Defendant counterclaimant’s inability to identify its trade secrets with specificity.  Regardless, it found as a matter of law that what the counterclaimant eventually identified was not a trade secret as a matter of law (business goals, price lists, products samples, marketing plans, etc.) or publicly disclosed (client list and other information).  This decision is yet another good guide to trade secret litigation for any trade secret lawyer.
TNS Media Research, LLC v. TRA Global, Inc., 11 CIV. 4039 SAS, 2013 WL 5502815 (S.D.N.Y. Oct. 3, 2013).


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