Intellectual Property Law

In a May 31, 2006 decision, Judge Pratter of the Eastern District of Pennsylvania granted limited a preliminary injunction in favor of a pharmaceutical services company (Fisher Bioservices) against its former sales representative (Haas) who had started working for a competitor in Fisher Bioservices, Inc. v. Bilcare, Inc.

Of particular interest is the court's discussion of what constitutes a "trade secret" under Section 5302 of the Pennsylvania Uniform Trade Secrets Act (PUTSA). Although it found that Haas' knowledge of the manner and method by which Fisher prices its services was a trade secret under the PUTSA, the court concluded that Haas' contact list, calendars and "scribble books" were not ? even though information included in these items was obtained during the time Haas worked at Fisher, involved Fisher's customers and/or included information learned from trade shows Haas attended while she worked at Fisher. The court recognized that "the line between a valuable customer list and a personal contact list that is of little or no value to an employer is a fine one to make," but nonetheless found that the under the facts of this case, the contact list, calendars and "scribble books" were not protectable trade secrets (with a few limited exceptions) because the PUTSA "requires that a customer list have some economic value or that the efforts to maintain the secrecy of the list to be reasonable."

As to the contact list, the court found that even though some of the contacts were Fisher's customers, "the bulk of this information could be obtained by other legal methods, such as from attendee lists from trade shows or even contacting the companies and seeking out information." On the other hand, the court found that the calendars and "scribble books" either duplicated information contained in the contact list or contained information "so incomplete that it would be difficult for anyone at Bilcare, including Ms. Haas, to utilize the handwritten notes to Fisher's detriment."

Was the court's attempt to draw a distinction between "customer lists" and "contact lists" appropriate? Let us know what you think.

Today's Blogger: Jeff Fisher