Case Study—Trade Secret
A new client approached our firm faced with a happy problem. They were an early manufacturer of liquids for vaping. The happy problem? They were growing so fast that they had to add on significant additional employees to their team. Normally this would not be an issue as their current employees were more like family members and treated as such. But with growth comes new, yet solvable, problems. The client required not just a significant upgrade to their employment agreements, but those agreements had to cover significant trade secrets. If you’re thinking Coca-Cola and the recipe to the famous drink, the client was presented with the same problem. Our law firm upgraded their employment agreements to include trade secret issues and developed a trade secrets program to protect their vaping liquids recipes—everything from protocols for handling recipes to storage when the line was not manufacturing product. Problem solved!
I was approached by a corporate attorney for a family run agribusiness. After more than sixty years of farming, the family had decided to sell the entire enterprise. The family had many well-known trademarks but had never bothered to register any of them. The sales price of the business was largely dependent on delivering valid registered trademarks to the buyer. I had worked with this attorney before. I proposed doing full trademark searches through a search company on all of the trademarks. After determining that a few were unavailable, we proceeded to submit trademark applications for the rest. The family eventually received registrations on a large majority of their trademarks which increased the value of the agribusiness by several millions of dollars. The registrations were then assigned to the buyer. Problem solved!
When I first started practicing a significant copyright issue was presented by the United States Copyright Office. Would the addition of color to a black and white motion picture (“colorization” or color recoding) support a new copyright. I had just started practice and was looking for a significant issue in which to write about. I had just started writing for the American Bar Association’s The Entertainment and Sports Lawyer law journal. I reviewed the Copyright Office notice in the Federal Register and decided to research the issue, submit comments to the Copyright Office and publish an article on the subject. The resulting article “A Coat of Paint on the Past? Impediments to Distribution of Colorized Black and White Motion Pictures” was the first published article on the subject. It raised quite a ruckus as some motion picture studios with large black and white motion picture libraries thought that the colorization of their motion pictures would attract new viewers and create additional income for the studios. The process failed of its own accord. The Copyright Office went against precedent and decided that the addition of color to black and white motion pictures did create a new copyright not in the motion pictures themselves but in the bare addition of color. As for my practice, I was invited to speak before the Copyright Society of the U.S.A. —a rare honor for a young lawyer.