The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: July 2022

Thinking Green in Downtown Pontiac

At The Dobrusin Law Firm, we believe a cleaner, safer, healthier community is better for us all. To improve our local area and the world at large, our firm participated in Main Street Pontiac’s annual Earth Day Cleanup in the spring and the recent pre-Arts Crawl Clean Up last week.

On both occasions, as our staff and other enthusiastic volunteers swept, picked up trash, pruned, and weeded, The Dobrusin Law Firm provided snacks and supplies to keep the troops happy and well-fed. There was a bit of hard work and a ton of fun, and the results of everyone’s efforts were immediately noticeable.

We can’t save the world, but we can dramatically improve our little corner of it. These small efforts make a big impact, and volunteering in our local community also has extraordinary mental health benefits. If you missed this year’s Earth Day celebration or Pre-Arts Crawl Clean Up, we hope to see you next year! We’ll bring the snacks!

Our thanks to shareholder Daniela Walters for leading the firm’s efforts.

Recent Criminal Case Involving the Theft of Coca-Cola Trade Secrets Is a Cautionary Tale for Current or Departing Employees

Anyone who has ever left a job knows those final days involve tying up loose ends, saying goodbyes, and packing up. Walking out the door one last time with a box full of desk photos, coffee mugs, and other personal belongings is a career rite of passage. That box might even include some pens, Post-It notes, or paperclips that the employer probably won’t miss that much. But if you leave with some of your company’s trade secrets or proprietary information or disclose that information to others while still employed, you can be assured your employer – and perhaps federal or state prosecutors – won’t brush it off so easily. In fact, the consequences of sharing or absconding with trade secrets can be catastrophic for departing employees.

This was a lesson a Coca-Cola chemical engineer recently learned the hard way.

On May 9, 2022, a federal judge in Tennessee sentenced Xiaorong “Shannon” You to 14 years in prison after being convicted on charges of conspiracy to commit trade secret theft, economic espionage, conspiracy to commit economic espionage, possession of stolen trade secrets, and wire fraud. The charges arose from her theft of Coca-Cola’s trade secrets involving bisphenol-A-free (BPA-free) coatings found inside beverage cans. She had intended to start a BPA-free coating company in China with a corporate partner backed by the Chinese government.

The criminal charges You faced were because her theft involved passing on stolen information for the benefit of a foreign government in violation of federal law. Trade secret theft is also a state-level crime in most jurisdictions, meaning the penalties can be severe upon conviction, as You now knows. But even if the disclosure or misappropriation of trade secrets doesn’t result in criminal prosecution, employees who engage in such conduct can face significant and career-destroying consequences. It is important to understand what trade secrets are and how not to wind up on the receiving end of costly and disruptive litigation and, yes, potential criminal charges.

What Are Trade Secrets?

A slightly different kind of intellectual property, trade secrets are any type of confidential or proprietary information that gives a business an advantage over its competition. This can include customer information and lists or special formulas or business processes unavailable to others.

A more detailed and expansive definition is included in the federal Defend Trade Secrets Act of 2016, which describes “trade secrets” as:

  • all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—
  • the owner thereof has taken reasonable measures to keep such information secret; and
  • the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.

Even if the Employee Created the Trade Secret, It Likely Still Belongs to the Company

Trade secrets can be some of a company’s most valuable assets, so most prudent businesses make significant efforts to ensure they remain secret. This often includes non-disclosure and confidentiality provisions in employment or severance agreements. Violating these agreements by disclosing confidential company information can lead to significant damages and the clawback of any pay or benefits included in a severance package.

Making matters even worse, an employee who provides their old employer’s trade secrets to their new employer can embroil their new company in litigation, tarnishing or threatening their job before it even begins.

Unless they have nefarious motives, most departing employees will not abscond with what they believe to be company trade secrets. They will hand over hard drives, laptops, files, etc., as requested by their employer without incident. The challenge arises when the employee believes the information they take belongs to them. What if the employee created or contributed to creating the trade secret? Doesn’t that make it the employee’s property?

The answer to those questions is that it doesn’t usually matter if the employee played a role in developing the proprietary information – it is likely still the employer’s property. Many employment agreements specifically provide that any creative works produced by an employee while with the company are “works for hire” or that the employee assigns all rights in their work to the employer. Even without such an agreement, the employer will still probably assert its ownership of the information and seek relief from a court to recover it or stop the employee from further use.

If you are preparing to leave your current position and have questions or concerns about trade secrets and what you can and cannot take with you to greener pastures, please contact one of the intellectual property attorneys at The Dobrusin Law Firm.

Dobrusin Law Firm Shareholders Complete Leadership Terms With Michigan IP Inn of Court

Last year, the Dobrusin Law Firm continued its long-standing presence in the Michigan Intellectual Property Inn of Court when two firm shareholders assumed leadership positionsKristen Pursley served as president for 2021-2022, and Daniela Walters was the Events Chair. At the organization’s recent annual dinner, the two completed their successful terms, with Kristen transitioning off the Executive Committee.

Under Kristen’s exceptional leadership, the organization had a remarkably successful year, despite the challenges of the pandemic. Her involvement with the Inn is just one example of her commitment to the legal profession in Michigan; she also serves as the current president of the Women Lawyers Association of Michigan Foundation and is a past president of the Women Lawyers Association of Michigan and the Women’s Bar Association.

For 2022-2023, Daniela will step onto the Inn’s Executive Committee as Vice-President and Programming Chair. Besides her contributions to the legal community, she helps improve Pontiac’s business community as a co-founder, past president, and current board member of Main Street Pontiac. She looks forward to celebrating ten years of the Michigan Intellectual Property Inn of Court and enhancing the organization’s programming.

Daniela planned the Inn’s annual dinner at Detroit’s Gem Theater with Dobrusin Law Firm colleagues Erin Klug, Eric Hydorn, and Bryan Lemanski to further represent the firm at the lovely event.

The Michigan Intellectual Property Inn of Court was founded in 2012 as part of the Richard Linn Inn Alliance to promote excellence in legal advocacy under the Professional Creed of the American Inns of Court. It comprises lawyers, legal educators, judges, and students with a shared commitment to this goal.

The Dobrusin Law Firm Helps Girls “Sparkle” for Prom and Homecoming

For many girls, the cost of a high school homecoming or prom dress can be a financial burden, especially when college tuition looms less than a year away or if there are more pressing economic needs. That’s where the Sparkle Network steps in, with help from shareholder Becky Wilson and The Dobrusin Law Firm.

The Sparkle Network is a Metro Detroit 501 nonprofit that helps various causes through fundraisers and programs. Two of the organization’s signature events – the Prom Closet Project Tour and the Dress Into a Dream Homecoming Dress Sale – give young ladies the opportunity to wear beautiful designer dresses and gowns to their most memorable high school occasions at little or no cost. Because of the programs’ growing popularity, retailers across Michigan offer new crops of dresses each year. Proceeds are funneled back into subsequent years’ sales.

Inspired by the Sparkle Network and its founder Maureen Lietz, Becky sought a meaningful way for the firm to aid the cause – and she found it. The Dobrusin Law Firm has hosted multiple dress sales in our Downtown Pontiac office, including a Prom Closet Project sale last spring. It’s been another fitting way (no pun intended) to show our dedication to the local community.

Helping high school girls isn’t the only thing the Sparkle Network does. Among its other activities are childhood cancer awareness (including craft room hospital visits and spa days for “princesses” aged five to sixteen who are in treatment or remission), Girls Night Out shopping events, and the Sparkle Wrapped Tour comedy shows.

Although the 2022 school year is over, the Sparkle Network is preparing for the next round of homecoming and prom dress shoppers. Volunteers and donations are always welcome, and there are still schools and clothing stores that aren’t familiar with the Prom Closet Project Tour or the Dress Into a Dream Homecoming Dress Sale. For more information, please visit the Sparkle Network website and Facebook page, or contact Maureen Lietz at 248-840-8136 or sparkle.network3@gmail.com.

Contact Information

The Dobrusin Law Firm
29 W. Lawrence St.
Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
Fax: 248-292-2910
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