Trade Secrets, Extraterritoriality, and Jurisdiction

29 Pages Posted: 11 Jan 2017

Date Written: December 1, 2016

Abstract

Twenty years ago, Congress passed the Economic Espionage Act of 1996 which criminalized trade secret misappropriation and authorized broad domestic and international enforcement measures against trade secret misappropriation. At the time of its passage, the EEA was lauded by the business community, but it was heavily criticized by scholars who worried that the statute was too broad and too protectionist. In the intervening years, the business sector renewed its complaints about the insufficiency of U.S. trade secret laws, and scholars continued to express skepticism about using criminal law to enforce trade secret policy. Congress recently passed a new statute, the Defend Trade Secrets Act of 2016, which creates a federal private right of action under the EEA for trade secret misappropriation and economic espionage, and authorizes a variety of remedies including injunctions, damages, and seizure of property.

In 2003, I published a student note examining the EEA and arguing that the broad statutory language and potential for extraterritorial enforcement created problems for the United States given our commitments to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS agreement”). Given the recent legislative efforts to expand the EEA to include private enforcement, it is time to revisit and update research on the EEA. This Article examines the new problems and challenges private enforcement of the EEA might present. In particular, this Article considers whether the problems of extraterritorial criminal enforcement extend to the civil context.

This Article proceeds in three parts. Part I gives a brief overview of the DTSA and its relationship to the EEA. Part II demonstrates that expanding the EEA to include civil enforcement creates personal jurisdiction problems. Part III argues that the doctrine of forum non conveniens presents yet another barrier to DTSA proceedings in U.S. courts. The Article concludes by noting that the jurisdictional necessities of civil enforcement under the DTSA set businesses on a collision course with the direction of personal jurisdiction and forum non conveniens law for which they have largely advocated the past few decades. In other words, viewing the DTSA through a jurisdictional lens reveals some of the underlying, understated, and confused purposes of the statute.

Keywords: jurisdiction, personal jurisdiction, forum non conveniens, international litigation, intellectual property, trade secrets, trade secret misappropriation, extraterritoriality, legislation

Suggested Citation

Effron, Robin, Trade Secrets, Extraterritoriality, and Jurisdiction (December 1, 2016). Wake Forest Law Review, Vol. 51, No. 6, 2016; Brooklyn Law School, Legal Studies Paper No. 475. Available at SSRN: https://ssrn.com/abstract=2896137

Robin Effron (Contact Author)

Brooklyn Law School ( email )

250 Joralemon Street
Brooklyn, NY 11201
United States

Register to save articles to
your library

Register

Paper statistics

Downloads
195
rank
148,897
Abstract Views
788
PlumX Metrics