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As if losing a valuable employee isn’t bad enough, imagine waving goodbye to invaluable information as well. That’s exactly what can happen to a business that owns a trade secret and confidential information. When Merrill Lynch claimed several of its employees defected to one of its major competitors, Salomon Smith Barney Inc., it asserted that its customer lists were a trade secret and that its former employees solicited their clients and confiscated confidential client information. Merrill Lynch prevailed in its preliminary injunction motion, succeeding in its efforts to stop the employees from soliciting any business from its clients, accepting any of its client business, and from using, disclosing or transmitting any information contained in Merrill Lynch’s records. The court ordered the return of all original records, copies or reproductions. While the case of Merrill Lynch v. Chung and Barnes took place in the U.S. District Court for the Central District of California, its lawyers haled from Rubin & Associates in Paoli, Pa. For some 15 years, the firm in Chester County, Pa. appears to have staked out unusual territory. Unlike many intellectual property practices, which combine some or all of copyright, trademark, trade secrets and patent law, Rubin & Associates focuses primarily in the area of trade secret law and post-employment restrictive covenant litigation. “Firms specializing in trade secret law are rare,” said Mark Halligan, chair of the American Bar Association’s Intellectual Property Law Section. That is changing somewhat, in large part due to the information age and the advent of new technology, according to Gregory Rubin, CEO of Rubin & Associates. “The increased demand for trade secret protection is motivating more firms to choose it as an area of specialization,” he said. Rubin’s firm practices in all 50 states. He said the firm is novel in that its lawyers are intimately familiar with the bench in every state, including the judges and local procedures. The firm can also tap into a network of legal counsel in almost every major city. The 28-lawyer practice has tripled in size in the last five years. “We grow to meet the client needs, which are a reflection of the business environment,” Rubin said. “We do not advertise, and we don’t publish. We just go to work everyday and do our job.” The firm services only a handful of clients at a time. Rubin said he sees no need to advertise since he is not interested in soliciting new accounts. He prefers to concentrate on taking care of his current clients. SEEING INTO THE FUTURE Long before trade secret law began booming, Rubin & Associates decided to make it the focus of its practice. In 1980, as a general practice firm, 20 percent of the Rubin firm’s practice was devoted to trade secrets and post-employment restrictive covenant litigation. That took a significant turn in 1986 when Rubin decided he wanted his firm completely committed to those areas. “I found those cases exciting and considered them the wave of the future,” said Rubin. Pursuing his passion, he downsized his then 10-lawyer staff to four, keeping the lawyers who specialized in trade secrets and post-employment restrictive covenants. Since then, the firm has grown to 28 lawyers. The Rubin firm includes five separate litigation teams of five to six lawyers each. They are divided geographically, with each team assigned to six to 10 states. The team leaders, and also members of the management and executive committees, are Chris Coss, Michael Fortunato, Mark Harbison, Joe Dougherty and Chris Steif. A trade secrets practice largely focuses on two areas: enforcing laws to protect trade secrets, often by obtaining injunctions; and advising companies of measures to protect trade secrets such as by creating corporate policies and procedures, marking certain documents confidential, restricting access to certain information and drafting restrictive covenants for different classes of employees. The main industries availing themselves of trade secret protection are insurance and financial services, computer and personnel consulting, dental supply and medical groups, specialty manufacturers and industrial suppliers, and telemarketing. Rubin’s idea of a successful practice is broad-based. He defines an accomplished national litigation program as one winning 20 to 30 injunctions in each jurisdiction and then combining them by region to achieve uniformity in the courts. The firm takes credit for getting 50 to 100 injunctions over the past 20 years in Pennsylvania, New York, New Jersey, Massachusetts, Illinois, California, Florida, Texas and in 20 to 30 other large cities. “Many firms profess to be specialists in the area of trade secrets and employee contracts but few have the expertise in that area that we do,” Rubin said. “Our competitive advantage is that on as little as 20 hours notice, we can do it because we need so little preparation.” So how did a firm with clients all over the country decide to settle in Paoli? “What matters most is that we are close to an airport limousine stop,” Rubin said. The firm’s offices are just a stone’s throw away from one. The firm maintains constant contact with its clientele. Five to 10 of its associates travel nearly once a week to meet with clients nationwide, Rubin said. IMMEDIATE RESULTS Rubin points out how technology has significantly affected the practice of trade secrets. It has fast-forwarded the entire misappropriation process. “Preceding the information age, it would take weeks to copy company data,” Rubin said. “Before e-mail and federal express, the only way to transmit the data was to box it and haul it to wherever it was going.” It is now easier and quicker to accumulate, analyze and download the data, misappropriate it and transmit it to a new employer. This expedited transfer of company information creates an increased demand for injunctive relief, since time is of the essence. “Now it’s a race to the bottom line,” Rubin said. “Clients want immediate results.” In an attempt to skirt the litigation process, an employer may insist that an employee sign a contract to protect the future relinquishment of a trade secret. But it may not be upheld in the courts. An employer’s interpretation of a trade secret might fail the court-imposed test. Also, trade secrets are constantly changing. An employee contract might have to be updated almost weekly or monthly. The sacredness of a trade secret gained widespread recognition with the enactment of the Economic Espionage Act of 1996. The act renders the theft of trade secrets a federal criminal offense. Mark Halligan said the challenge in trade secret law is defining what is a trade secret. Oftentimes, the only way to establish a trade secret is to litigate it. “The best way to understand the definition of a trade secret is to look at the two words separately,” Halligan said. “For a court to declare the data a trade secret, an attorney must prove that the ‘information is not generally known in the trade and that reasonable measures were taken to protect the information as a secret.’” The ABA-IPL Section formed a committee on trade secrets and interference with contracts, which keeps abreast of relevant current developments. “Trade secrets is a high stakes practice. It is won or lost in the courtroom and rises or falls on the quality of the lawyer,” added Halligan.

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