Trade Secrets: law and practice, by David W. Quinto and Stuart H. Singer
(Oxford University Press: 2009)
496 pages; Includes a very detailed table of contents, a table of cases, a good index with “see” references, and an appendix with a summary of the state law on trade secrets for 22 selected states.
Reviewed by Betsy McKenzie, Suffolk University/Boston
The co-authors are well-established U.S. attorneys, partners in their respective firms. The Oxford University Press website identifies them, in part as:
David W. Quinto is a founding partner and head of internet litigation at
Quinn Emanuel Urquhart Oliver & Hedges in Los Angeles, CA. His
practice focuses on IP matters, with an emphasis on copyright, trademark,
trade secret and Internet-related claims.
Stuart H. Singer is a partner at Boies, Schiller & Flexner, LLP. Over the
past 20 years, Mr. Singer has successfully handled many significant and
difficult litigation cases in trial courts, arbitrations, and appeals throughout
the U.S. These have included several trials of over a month’s duration. Mr.
Singer has handled cases in a number of substantive fields, including IP,
antitrust, and constitutional law.
The authors include case analysis, but take a particularly practical approach to the law of trade secrets. Mr. Quinto notes that his interest in writing the book grew out of strategy sessions in a complex trade secret defense case several years ago. The hypothetical questions, overlaps and gray areas that were raised in the complicated scenarios were the genesis of the book. Mr. Singer had previously noted the lack of a concise, practical guide in the area, and when, first asked to review the book proposal, and then asked to join on the project, he was enthusiastic. The authors’ note states:
We wrote this book to benefit litigators who may only occasionally encounter
a trade secret misappropriation claim, as well as in-house counsel who wish
to take prophylactic measures to keep their clients out of trade secret disputes
and challenge critically courses of action proposed by outside counsel if and
when litigation does occur.
So, the book is designed to fit a perceived gap between the full-blown treatise, like Milgrim on Trade Secrets, which takes an academic and non-litigator-oriented approach to the issues, and the specialized practitioners’ materials, such as James M. Pooley’s Trade Secrets (Law Journal Press, 1997; updated biennially; 720 pp.), and Melvin F Jager’s Trade Secrets Law (Thomson-West, originally Clark-Boardman, 1985, approximately a 609 page looseleaf, but also now a Westlaw database). Quinto and Singer’s new book is aimed at informing the non-specialist, and helping the in-house counsel who must suddenly supervise a specialist in trade-secrets law.
The book does a nice job of laying out the major issues a non-specialist needs to understand in this complicated area. For instance, trade secrets law in the United States is nearly exclusively a creature of state law. And states fall into three major categories of practice. There are two versions of a Uniform Trade Secrets Act, 1979 and 1985, which differ substantially. Some states, such as Massachusetts and North Carolina, have separate definitions of what is protectable as a trade secret, Massachusetts through court decisions, and North Carolina, through statute. And some states, such as New York, New Jersey and Texas, have no statutes at all to define what is protectable as a trade secret. Other states follow the Restatement, Third, of Unfair Competition. One can see what complex waters these are. The appendices do a nice, succinct job of laying out the current law with citations. Keep in mind, however, that this volume is not designed to be updated. There is not any pocket part addition contemplated; one will have to shell out for the next volume whenever that happens, or update these citations through Shepards or Keycite.
The litigation issues are presented from both the plaintiff’s and the defendant’s point of view. There is even a chapter on considering criminal prosecution. But the book also spends a good deal of time on issues of prevention as well. The authors detail corporate policies, plans to prevent trade secret problems in the first place. A lengthy chapter in hiring and firing employees also aims at prevention.
Another helpful feature are sample forms and letters. Trade secrets law often crops up where an employee leaves one company and founds another or is hired by a competitor. The employees often are required to sign non-compete forms or similar agreements to prevent them taking the intellectual property of the former employer and using it for the new employer. There are many versions of non-compete forms, reminders, letters and compliance requests and it is a much-used term in the index. The book presents the issues in a very accessible, practical way.
I would recommend the book for academic libraries with a strong collection and specialty in intellectual property law, including trade secrets. It is especially written for practitioners who do not specialize in trade secret law, but are called upon to pick up the issue or supervise outside counsel who are specialists. It is certainly a fine book for that niche market. For a library without a desire to have a comprehensive collection in the area, it is awfully expensive and overlaps the very useful Milgrim, Poole’s and Jager’s. In the alternative, it may be a good, much less expensive alternative for a smaller library, without an intellectual property focus, that wants an introductory text with a more practitioner-oriented bent. It is not a serial, which may actually be an advantage, from the budget standpoint.