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86 J. Pat. & Trademark Off. Soc'y 336 (2004)
Trade Secret Inevitable Disclosure: Substantive, Procedural & (and) Practical Implications of an Evolving Doctrine (Part I)

handle is hein.journals/jpatos86 and id is 338 raw text is: Trade Secret Inevitable Disclosure:
Substantive, Procedural & Practical
Implications of An Evolving Doctrine
(Part I) CONTINUED NEXT MONTH
William Lynch Schaller*
I. INTRODUCTION
Trade secret misappropriation is an ever-present risk when business
relationships end and former friends become foes in the marketplace.
After all, when employees find themselves looking for work the first
place they call is a competing firm willing to pay a premium for their
knowledge and skills. If they have had access to their employer's
proprietary information, however, such employees present a trade secret
disclosure threat, but not necessarily one sufficiently severe to warrant
injunctive relief, particularly in the absence of a restrictive covenant or
an explicit threat to use or disclose secrets. '
Trade secret owners confronting this problem in recent years have
increasingly invoked the inevitable disclosure doctrine, a theory which
permits     a   court   to    restrain   an    ex-employee's       post-termination
* Partner, Baker & McKenzie, Chicago, Illinois. Mr. Schaller previously served as chairman of the
Trade Secret Inevitable Disclosure Sub-Committee of the American Bar Association's Intellectual
Property Law Section. He presented an earlier version of this paper in New York City on June 6, 2001,
as part of a seminar, Advanced Strategies for Protecting and Litigating Trade Secrets in the New
Economy, sponsored by the American Conference Institute. The author thanks Hillary Krantz and Chad
Beyer for their research assistance in connection with the preparation of this article.
I Cf Harley & Lund Corp. v. Murray Rubber Co., 31 F.2d 932, 934 (2d Cir. 1929) (L. Hand, J.) ([I]t
has never been thought actionable to take away another's employee, when the defendant wants to use
him in his own business, however much the plaintiff may suffer. It is difficult to see how servants could
get the full value of their services on any other terms; time creates no prescriptive right in other men's
labor. If an employer expects so much, he must secure it by contract), quoted in Del Monte Fresh
Produce Co. v. Dole Food Co. Inc., 148 F Supp.2d 1326, 1337 (S.D. Fla. 2001) (rejecting inevitable
disclosure claim under Florida and California law), and quoted in AMP Inc. v. Fleischhacker, 823 F.2d
1199, 1205, n.3 (7th Cir. 1987) (rejecting inevitable disclosure claim under Illinois law).

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