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Welcome to AccelPro IP Law, where we provide expert interviews and coaching to accelerate your professional development. Today we’re featuring a conversation with Mary Mazzello of Kirkland & Ellis.
Mazzello is a Partner at Kirkland & Ellis’ New York office, where she specializes in intellectual property litigation. Her practice focuses on trademark, copyright, trade secret, and music royalty matters. Mary has litigated cases across a wide range of venues, including trademark disputes before the Trademark Trial and Appeal Board, music copyright matters before the Copyright Royalty Board, IP disputes in state and federal courts, and appellate issues before the United States Supreme Court.
We talk about establishing trade secret claims, intellectual property protection strategies, the evolution of trade secret protection, risks posed by remote work and employees working in public areas like coffee shops, and more.
“My client worked for Company A and moved to Company B. Company A said that they think he stole trade secrets and filed for a preliminary injunction to prevent the guy from working at the new company for a year and to claw back any confidential information that they claimed he took,” Mazzello says.
“We all showed up to court for the preliminary injunction hearing and the plaintiff had forgotten to file the paperwork to seal the courtroom. This meant that the courtroom was open to the public. All of their plans for doing cross examination related to the trade secrets went completely out the window.”
Listen on Apple Podcasts, Spotify and YouTube.
Mary Mazzello’s Kirkland & Ellis profile.
TRANSCRIPT
I. ESTABLISHING TRADE SECRET CLAIMS
Neal Ungerleider, Host: What are some of the key elements a business must establish in order to successfully claim a trade secret in court?
Mary Mazzello: There are three elements of a trade secret claim. One is you have to have a trade secret, and there's a few elements to proving that. Trade secrets are pretty broad in terms of the types of information they can cover. It can be any form of financial, business, scientific, technical, or economic information, but it has to be something that you've taken reasonable measures to keep secret and it has to have value from the fact that other people don't know about it.
That's going to be the first part of your claim. Do you have a trade secret? Do you have something protectable? The second part is misappropriation. That has multiple different steps. The key questions with misappropriation are did somebody acquire this trade secret without permission, or by using improper means?
You could also establish a trade secret claim by showing that somebody is using or disclosing a trade secret that they shouldn't have—they're not the ones who actually stole it, but they have a reason to believe that they aren't supposed to be using this information.
Then, on top of having a trade secret and having misappropriation, you should also show that you've been damaged in some way, or are likely to be damaged, by the fact that this trade secret was stolen.
NU: What are the most common types of trade secret cases that you've encountered?
MM: Mostly the typical experience of having a former employee who goes to work for another company or who starts their own venture, and their former employer suspects that they have taken trade secrets. That is by far the most common type of trade secret claim, the former employee claim.
You also sometimes run into vendors or business partner type claims—somebody that a company has a relationship with, who they share information with, and then at the end of that relationship, there's a suspicion that whoever you were sharing the information with has taken it.
I actually have had and I'm currently dealing with a trade secret claim that is the rare kind where there was no prior relationship between the two entities that are part of the case, but there is still a trade secret claim. It has to do with downloading from a website, and was the information publicly accessible or was it not? I deal with those types of questions.
NU: Are there any cases that stand out to you as particularly unique or interesting?
MM: I am lucky enough to like what I do, so I find almost all of them interesting in some way. One thing that's very fun about intellectual property law in general, and trade secrets in particular, is that they often involve different types of technology.
I had a big case for a while that had to do with razor blade development and manufacturing. What do I know? You buy a razor blade at a store, you don't think anything of it. Then all of a sudden I was deep in the weeds of all of the different steps of that process to the point.
I appeared in front of our judge at one point and started talking about this, and he just paused. He'd be like, “Miss Mazzello, did you ever think you'd be such an expert in the field of razor blade manufacturing?” “No, your Honor.”
Something that is cool about all trade secret cases is you really have to dig into a certain type of technology. And you get to work with experts in that field in order to get educated on a subject. That definitely stands out as a fun moment with a judge.
NU: Do you have any recommendations for our listeners on how to dig into a new type of technology they may be unfamiliar with and how to get their heads around it?
MM: There's a lot of different ways. Definitely working with experts. In most trade secret cases, you're going to be hiring an expert in the field to help you. They help educate you as the lawyer, but they also are going to appear in the case most of the time and be an expert who can translate things for a jury or translate things for the judge.
That is one way. I also like to start at the basics—do some searching, read an article, and try to understand what this technology is about. It can be anything from what’s written for general consumption, which often is good enough to give you the basics, to reading academic articles as you get more comfortable with the subject, so you understand how any type of technology or process works.
Get educated from as many different sources as you can. Of course if the business people are willing to talk to you about the work that they've been doing, they know it better than anybody. Wherever you can get the information from, I think you should take advantage of that.
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II. CHANGES IN TRADE SECRET LAW
NU: How have changes in trade secret law, including the 2016 Act, changed how businesses protect or should protect their confidential information?
MM: I think that the methods of protection remain the same except for that now trade secret law is at the forefront of everybody's mind. For a while, our system in the U.S. was that every state had its own trade secret laws. Some states, or at least one state, were still using common law in order to protect trade secrets.
Then, in 2016, the federal government decided to pass the Defend Trade Secrets Act, which created a federal cause of action for trade secret law. All of a sudden businesses were waking up to the fact that trade secrets could be another form of protection for intellectual property. People started thinking about it a lot more.
Our rules haven't changed all that much. We're still focusing on if you have taken reasonable measures to protect your trade secrets. Everybody is just now remembering that they actually should be thinking about trade secrets being part of their toolkit for protection.
I don't know if it's a chicken or an egg thing, but with evolution in technology, we're seeing a lot of companies that are developing new techniques for watching out for misappropriation. You can buy tools that you can install to check to see if stuff is being uploaded in an unexpected way or people are accessing files that we don't think they should be accessing.
I've heard of some companies coming out with new technology to help companies track their list of trade secrets, but some companies are becoming more interested in that in order to keep track of what types of information they have.
The tools that I was alluding to earlier were data loss prevention tools. If you look that up, you'll see a whole list of options to help with protecting trade secrets. The DTSA is a federal statute, and you're not just isolated to acts of one specific state. You can get damages for everything that has happened in the United States and there are cases saying you can get damages for stuff that happened internationally as well if you had some U.S. link.
It really opened the door to much, much bigger damages claims. This is probably why we have seen it take off since 2016 as a practice area.
NU: Is the rise of remote and hybrid work changing how businesses protect trade secrets?
MM: I think a ton of stuff comes up with the remote work environment. There's obviously the technological aspect. A lot of people probably don't even realize it, but when they log into their computer from home, it goes through a VPN which helps to create a more protected link across the internet.
This makes sure that it's harder for people to swoop in and steal things when you're working remotely online. Companies are installing those types of things; the data loss prevention tools that I talked about earlier; everything is password protected.
But with remote work, I tend to think more about the old school types of misappropriation. I live in a small New York City apartment and my neighbor is two feet from me. If I work with my window open, I would have to think about the fact that anything I say, she could potentially hear. I think people, especially people working in cities, need to think through that aspect of remote work.
The same with going to work in a coffee shop. Anybody can look over your shoulder and see what's on your screen. You can use things like screen covers, where if you look straight on you can read the screen, but if somebody is looking at a side angle, it just looks like a black screen. People should actually be using those types of tools because misappropriation is not just hacking somebody's computer. It could be anybody hearing your conversation or sneaking a look over your shoulder while you're on an airplane.
NU: Can you walk us through the process and challenges in proving a trade secret was misappropriated?
MM: The biggest challenge is oftentimes identifying what your trade secrets are. Unlike a lot of other intellectual property systems, you don't have to have some record of what your trade secret is. If you have a trademark, we know what that brand name is. If you're talking about copyright, you have to have a registration where you told the copyright office. This is what I'm protecting.
Same thing with patents. You have to file your patent application. We all walk into the case knowing what we're dealing with. With trade secrets, there's no requirement that anything is recorded somewhere. Plaintiffs will bring their claim and say that a trade secret has been misappropriated and the defendant almost immediately says, “What's the trade secret? Tell me what it is.”
If you're talking about your razor blades earlier, is it a specific temperature that the metal is heated at and then a specific oven type to go with that? Or is it something totally different?
A lot of time is spent in litigation with the plaintiff trying to define the trade secret, but without doing it too narrowly because they still haven't gotten behind the curtain to see what the defendant is actually up to, and they won’t until you get into discovery.
The plaintiff is trying to define the trade secret enough to stay in court, but keep it broad enough to figure out what the defendant's actually doing. The defendant is trying to do the opposite. They're trying to force the plaintiff to define the trade secret as narrowly as they possibly can to make sure it gets defined and then they can say, “Our conduct doesn't fall into whatever you claimed your trade secret is.” That battle of defining the trade secret is one of the biggest challenges to bringing a trade secret misappropriation claim.
Trade secrets can bring up a lot of questions of personal jurisdiction. Oftentimes it's an individual who worked for company A and now works for company B, and company A wants to go after that person and they also want to go after the company that the person is now working for.
You have to make sure that you have jurisdiction over that company and you have to prove that whatever the individual did also infiltrated the company if you want to maintain the claim against both the individual and your competitor.
NU: Are there situations where it might be better to protect an innovation as a trade secret instead of patenting it? How can attorneys help their clients make that decision?
MM: The biggest reason to choose trade secret protection is that it lasts forever. If you have a trade secret and you can keep it secret you benefit from the fact that it is secret and you can maintain that protection for the life of your company. Whereas with patents, it's a limited time period. That’s the big thing to think about. You'll want to think about not just keeping it a secret, but once a product is released into the world, what can people learn about it?
Because if people can take that product and reverse engineer the process, then you probably don't have a trade secret anymore. Now you've released the product and, even though you didn't release your exact steps for creating that product, the fact that people with general skill in the industry can look at the final product and understand how it is created means that you're going to lose your trade secret protection, most likely.
Whereas, with a patent, even after you release the product into the world, you are going to have protection for at least the limited lifespan of the patent. One question you're going to want to be thinking about is, once I release my product into the world, is that going to be the end of the secret? If it is, you might want to go with the patent instead of the trade secret.
The other thing to think about when you're dealing with having to patent or copyright something and you have a trade secret is whether you’re going to try to maintain both over the product. Maybe one aspect of it is covered by trade secrets and another aspect is covered by some other doctrine.
Remember that whatever you file for your patent or for your copyright is going to be publicly available once you file it, and so you don't want to file a piece of the part that you later want to claim is your trade secret.
Digging through patents is one of the best things a defendant can do when they are trying to defend against trade secret misappropriation. They want to find a patent that says either the plaintiff in this case already told the world all about this aspect of their product that they claim is a trade secret. It may be that competitors have talked about the type of process that somebody is claiming as a trade secret.
Once you decide on your method of protection, if part of that plan involves a trade secret, be careful about what you're actually putting into the world when you're trying to use the other forms of IP that are available.
NU: After the FTC ban on non-competes, how are companies and attorneys assessing different protection strategies for company trade secret and confidential information?
MM: The ban on non-competes, as I understand it, is limited to non-compete. Non-compete means you cannot go work for a competitor company for a certain amount of time or within a certain geographic limit. That's how they typically were written.
The FTC is saying, “No, you can't use non-competes anymore. We value employee mobility. You can work for one company and then go work for another company even if those two are competitors. Nobody can stop you from doing that, but we still will be protecting confidential information, so you can still have non-disclosure agreements prohibiting people from using trade secrets or confidential information that they learn.”
That means that even when they go to work for another company, they can't expose all of the trade secrets or expose all the confidential information that they have learned at their first company. I actually think the ban on non-competes is going to make trade secret protection even more important because that's our option now.
People used to take maybe an easier approach of just saying “I protect my trade secrets by making sure that people can't go work for competitors. I have a non-compete to prevent people from doing that. And that's a good way to make sure that my trade secrets don't accidentally get shared with the public or with a competitor. Now, since I can't rely on a non-compete anymore, my best option is to bring a trade secret claim or a breach of confidentiality claim.”
I think it could lead to even more stress on that aspect of protecting IP.
NU: What are some ways that attorneys can handle the trade secrets during litigation to prevent further exposure?
MM: You have to plan ahead because our court systems are designed to be open to the public in the United States; we believe that the court system should be open. That's the default position of most courts. If you go into a courtroom, it's going to be open to the public. Anybody could sit in any day of the week. Reporters could even cover it if, for some reason, they wanted to.
Similar with filings in court, the default position is that it will be filed on the public docket. If you don't want that, you have to ask that the information be sealed. There's usually specific steps for doing that. What that means is when you have a trade secret case, the fundamental point of your trade secret case is to say that you have information that is secret and is not known to the public. If you accidentally put that on the public docket with one of your filings, that completely destroys your trade secret claim.
My client worked for Company A and moved to Company B. Company A said that they think he stole trade secrets and filed for a preliminary injunction to prevent the guy from working at the new company for a year and to claw back any confidential information that they claimed he took.
We all showed up to court for the preliminary injunction hearing and the plaintiff had forgotten to file the paperwork to seal the courtroom. This meant that the courtroom was open to the public. All of their plans for doing cross examination related to the trade secrets went completely out the window. They just couldn't do it because, had they proceeded with that plan, they would have just been exposing all of the trade secrets to the public.
We had a judge that was very follow-the-rulebook-as-the-rule book-was-written, and he said you were supposed to file a motion to seal the courtroom previously and it's too late now. You're going to have to proceed as is. We defeated that preliminary injunction, but it was a huge lesson for me to always think ahead.
If you're going to want to talk about trade secrets during a hearing or during a trial, put the steps in place to seal the courtroom first because otherwise you're going to be in a position of trying to talk about trade secrets in a public setting.
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III. DANCE AND IP LAW
NU: Can you tell us a little bit about why you chose IP as a specialty?
MM: I have a bit of an unusual background. In undergrad, I studied economics and my minor was dance, but dance was my life despite it being my minor. After undergrad, I spent five years teaching dance and performing. That was all wonderful, but I decided at some point I needed a long term, stable career.
Law always seemed appealing and like it fit my skills. I decided to go to law school and the more I learned about IP, I saw that it actually still had some kind of connection to the art world that I had been in before. There are cases related to dance; there are cases related to artworks and theater. I veered toward IP because it still felt like it had a little bit of a connection to my background.
Little did I know that I would be equally fascinated by learning about the ins and outs of how to protect code in the new AI environment, but it was the arts and theater background that first brought me to the IP world.
NU: Do you have any recommendations for listeners who are coming from careers in the arts to starting law school?
MM: Many of the people that I work with have different interests and different backgrounds. They are coming from music or dance or theater, whether it was a hobby or a career before they came to law.
I think bringing all of that background with you is an asset. We learn from everybody and everybody's background here. Just embrace that as part of your life and your background rather than trying to act like it was an embarrassing detour, which I think is what some people fear it looks like.
They think law has to always be serious and businesslike, but the arts are a part of it too.
NU: Can you give the AccelPro community an example of a time when a peer, not a supervisor or a mentor, helped you with a difficult challenge during your career?
MM: I've been at a large law firm my entire career at Kirkland Ellis. I've been here since I graduated law school. It has so many great opportunities and interesting cases, but there are a lot of long hours and everything is time sensitive and high pressure. You want to step up to that, but it can be stressful.
My advice to young attorneys is always to find friends when everything is stressful and feels overwhelming. Find the people that you can call and just complain to or commiserate with. That has been the best way that my peers have helped me and supported me in this. Not just by being work colleagues, but as real friends who are going through a lot of the same experiences. They can commiserate and be a good sounding board for something that is frustrating.
What's amazing is if you reach out to other lawyers, you'll find that they want to talk and they want to be supportive. Whatever rumors there are about lawyers being cut throat is really not the case. Over my entire career, my peers have been people that I can call, complain to or just grab a cup of coffee or to help figure out a problem that I'm struggling with. And they're always willing to do it.
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This AccelPro audio transcript has been edited and organized for clarity. This interview was recorded on June 18, 2024.
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