We often deal with non-compete provisions in employment contracts. But the same contracts frequently include trade secret and return of property provisions. An allegation regarding the conversion of trade secrets is a very serious matter, but your employer will need to prove the allegation. “Evidence of purported ‘trade secrets’ must be more than general assertions, but must sufficiently specific to allow a determination by the court.” Healthcare Servs. of the Ozarks, Inc. v. Copeland, 198 S.W.3d 604, 611 (Mo. banc 2006); Mo-Kan Central Recovery Co. v. Hedenkamp, 671 S.W. 2d 396, 400 (Mo. App. 1984). “The burden of proof rests upon an employer to substantiate its asserted interest in its trade secrets.” Copeland, 198 S.W.3d at 611.
Missouri statute section 417.453 defines “misappropriation” as “Acquisition of a trade secret of a person by another person who knows or has reason to know that the trade secret was acquired by improper means” and “improper means” as “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means”.
An employee’s duty of loyalty means that an employee cannot work directly against his employer’s interests. Western Blue Print Co., LLC v. Roberts, 367 S.W.3d 7, 15 (Mo. Banc. 2012). An employee may, however, prepare to leave employment and compete directly against his employer. A breach arises when he goes beyond the mere planning and preparation and actually engages in direct competition. Id., at 17.
As held in Diodes, Inc. v. Franzen, 67 Cal. Rptr, 19, 24 (Cal. Ct. App. 1968):
Before a defendant is compelled to respond to a complaint based upon claimed misappropriation or misuse of a trade secret and to embark on discovery which may be both prolonged and expensive, the complaint should describe the subject matter of the trade secret with sfficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons skilled in the trade, and to permit the defendant to ascertain at least the boundaries within which the secret lies.
The common law of other states is analogous. As stated in a Mississippi case:
It is painfully obvious, therefore, that identification of the trade secret at issue is the most fundamental and basic aspect of this case…Plaintiff’s failure to provide the written trade secrets has, at the very least, prevented defendants from obtaining adequate discovery on the most fundamental issue in the case, from obtaining expert testimony or other similar evidence to confront the allegations of trade secrets, and from adequately preparing a defense for trial.
Diversified Tech, Inc. v. Dubin, 31 U.S.P.Q. 2d 1692, 1695 (S.D. Miss. 1994). See, also Diondes, 67 Cal. Rptr. at 24 (“sufficient particularity to separate it from matters of general or special knowledge in the trade” and “to permit the defendant to ascertain at least the boundaries within which the secret lies”); Automated Techs., Inc. v. Eller, 160 F. Supp. 2d 915, 926 (N.D. Ill. 2001) (“particularized”); Imax Corp. v. Cinema Technologies, Inc., 152 F. 3d 1161, 1164-1165 (9th Cir. 1998) (“sufficient particularity” and “reasonable specificity”). As stated in DeRubeis v. Witten Tech, Inc., 224 F.R.D. 676, 681 (N.D. Ga. 2007), particularized trade secret identification “ensures that [Plaintiff] will not mold its cause of action around discovery it receives”
Missouri’s Computer Tampering statute §569.095 makes it illegal for a person to knowingly and without authorization or without reasonable grounds to believe that he has such authorization:(1) Modify or destroy data or programs residing or existing internal to a computer, computer system, or computer network; or (2) Modify or destroy data or programs or supporting documentation residing or existing external to a computer, computer system, or computer network; or (3) Disclose or take data, programs, or supporting documentation, residing or existing internal or external to a computer, computer system, or computer network…. "[s]ection 569.095 states that a person commits the offense of tampering with computer data if he knowingly, and without authorization or reasonable ground to believe he has authorization takes data that exists external to a computer or computer system or computer network.
Anzaldua v. Northeast Ambulance and Fire Protection Dist., 978 F. Supp. 2d 1016, 1030 (E.D. Mo. 2014) (complaint failed to state a claim for violation of Missouri Computer Tampering Act because the reasonable inference from the allegations, accepted as true, was that employer was aware of employee’s access, and gave actual consent, whether expressly or constructively, to her access, and because key allegations were made “upon information and belief,” and failed to provide the factual or documentary support needed to make them plausible). In sum, if you have signed an employment contract you should review its provisions with legal counsel before you begin your preparations for departure from your current employer. More important, your employer will have trade secrets and computer access and property-right protections even in the absence of an employment contract. As such, you should go forth with caution.