Palm introduces its newest Treo, Nokia and Google partner for instant messaging on handhelds and Research In Motion's BlackBerry tackles the China market. Another day, another hot device. The downside: keeping the enterprise network secure amid a barrage of new consumer devices.

Indeed, when Mark Halligan, a principal in the Chicago-based law firm Welsh & Katz, wants to show business leaders how easy it is for their employees to secretly walk out the door with important data, he simply shows them his watch, which bears a USB connector that allows the device to download and store roughly 1GB of electronic information.

The security risks from such digital toys--not to mention smart phones, digital music players and USB drives--are growing, said Halligan, who urges companies to police how employees use outside devices. "With outside consumer devices, you need to build strict policies that police and limit the use of each individual device," he said.

�Gathered in the subterranean confines of a decommissioned vault in the basement of the Boston Stock Exchange, a panel of IT security experts told the assembled crowd that short of locking all their proprietary information in such a contraption, there may be little hope for securing their data.

Brought together on May 12 for imaging giant Xerox's 2006 Security Summit, the group of technology, intellectual property and law enforcement specialists painted a dreary picture of the current state of information security in enterprise companies, and even U.S. government agencies.

Their warnings and anecdotes left little doubt among attendees that much work remains to be done in fighting the growing threat of so-called cyber-crimes.

***************

As a result of the insider threat, companies are struggling perhaps more than ever before, said Mark Halligan, principal attorney at the Chicago-based law firm Welsh & Katz, which specializes in intellectual property law.

To demonstrate the ease with which people can plug devices into corporate networks that allow them to walk away with gigabits of stolen information, the attorney showed off his wristwatch which featured a USB connector and onboard memory.

"This whole concept we have of the security perimeter has disappeared; it's more about where your critical data is being protected at any given time," Halligan said.

"Companies lack the technical capabilities to ensure that employees, good and bad, can be effectively monitored. IT is the vehicle for distributing these assets and you won't know that you've been fleeced until you get to a trade show and your next big product is already there."

While the experts contend that the pressure on enterprises' network defenses shows no sign of abating, and in fact may likely increase, they agreed that most companies' must begin aggressively distributing and enforcing IT security policies, and holding workers caught breaking the rules more accountable.

"KEEP YOUR CHIEF ASSET SECRET"

John Yuva is a writer for Inside Supply Management�.

April 2006, Inside Supply Management� Vol. 17, No. 4, page 22

Are your company's employees aware of your key assets? Not knowing who knows what may cost companies millions of dollars per year.

What represents a company's most valuable corporate assets? In many instances, physical assets, such as people, products or facilities, are the first to be identified. Executives can easily track and account for the movement and condition of physical assets and thus assign them the greatest amount of weight. While physical entities certainly comprised the majority of corporate assets 25 years ago, the dawn of the computer age ushered in new technology and a greater dependence on information. As such, the viability of today's companies rests with their intangible assets � most notably trade secrets.

In his article for the National Law Journal, "Duty to Identify, Protect Trade Secrets Has Arisen," R. Mark Halligan, a principal in the intellectual property law firm of Welsh & Katz, Ltd. in Chicago, says that trade secrets are estimated to comprise 80 per-cent of the assets in New Economy companies. "Unfortunately, many Fortune 1,000 companies do not have adequate systems in place for the identification and classification of their trade secret assets," he says. Because of supply managers' involvement with third parties, having an intellectual property (IP) focus in those relationships is essential in protecting trade secrets and other IP rights.

Trade Secrets Exposed

What constitutes a trade secret? As one of four intellectual property rights (trade secrets, copyrights, trademarks and patents), trade secrets are defined as information that is not generally known in the trade that (1) reasonable efforts have been made to protect and (2) that gives holder a competitive advantage. This can include everything from supplier and customer lists to product diagrams and specifications and even new product ideas written down on a napkin during a business lunch.

Halligan says one of the advantages of trade secrets is that they protect combinations of information. Thus, while each element may be known in the public domain, the unique combination of the information and the ability to derive economic value from it gives the holder the right to claim trade secret status. For example, a customer database includes the name, address and phone number of every customer. Each customer's information could be found in a phone book; however, the compilation of that data is not readily available and not generally known in the trade. It is therefore considered a trade secret.

Trade secret protection begins with a process that identifies and classifies these assets. Halligan believes that it's an obligation of every company to establish a trade secret control committee or trade secret officer with the purpose of identifying these assets on a 24-7 basis. "The excuse that it is too overwhelming of a task is simply unacceptable, especially now with software available that identifies, classifies and tracks these assets," he says. (For more information about trade secret identification and its relation to Sarbanes-Oxley compliance, see next month's issue of Inside Supply Management�.)

IN THE HIGHLY COMPETITIVE global economy, trade secrets often differentiate manufacturers from their competitors as advantages in other areas erode.

But executives need to handle such secrets according to new rules or be subject to punishment under Sarbanes-Oxley (SOX), warns attorney R. Mark Halligan, a partner and specialist in trade secret law at the Chicago law firm Welsh & Katz. Halligan says because of SOX, companies no longer can treat trade secrets as an amorphous intellectual property right. SOX sets new duties of disclosure and governance that require publicly traded companies to identify, protect, set a value on and report trade secrets as assets.

The trade secrets must be reflected in quarterly and annual reports; the CEO and CFO must personally certify the reports; and the company must document and certify both the internal control structure and procedures for financial reporting and controls. SOX imposes civil and criminal penalties for violations of its requirements.

So far, no companies or executives have been sanctioned by the Securities and Exchange Commission or sued by shareholders for mismanagement in this area under SOX, but Halligan expects it.

Some companies, such as IBM, DuPont and Microsoft, have developed systems for tracking trade secret assets, but most companies neglect these assets until a key employee leaves, and then they turn the matter over to outside attorneys to investigate and pursue legal actions if necessary, Halligan says. This approach completely neglects the type of internal controls required by SOX. Halligan suggest these practices for compliance:

* Identify trade secrets by using both a systematic procedure and a classification scheme.

* Implement security measures and internal controls to protect trade secrets by limiting access; defining different levels of access through password protection; using tracking systems to control and monitor the distribution of trade secrets after initial access and to certify non-disclosure agreements from third parties before revealing trade secrets.

* Set the value of trade secrets based on the net present value of expected future cash flows to be derived from them.

* Implement internal controls to assure notice to management and timely reporting of material changes or losses related to trade secrets.

Mergers and Acquisitions Journal

December 1, 2005

HEADLINE: Botching Trade Secrets Can Run Afoul of Sarbanes-Oxley: U.S. firms, including acquirers, are under legal pressure to improve management and valuation of intellectual property

BYLINE: Martin Sikora

BODY:

American companies, including buyers, have taken their lumps for slipshod management of trade secrets and other valuable intellectual property (IP). But the traditional penalties - reputational black eyes, financial losses, and impaired performances - may be pats on the wrist compared with the legal perils executives and directors court if they continue their cavalier treatment of intellectual assets.

The risks of legal danger surged with enactment of the ubiquitous Sarbanes-Oxley Act (SOX), according to R. Mark Halligan, a Chicago-based lawyer and outspoken champion of stronger IP management. Trade secrets and their IP cousins, e.g., patents, trademarks, logos, licenses, etc., are financial assets, and that puts them clearly within the SOX ambit, he says. Managers and directors now have "an obligation to identify, classify, protect, value, and report on material changes in valuation of these assets to shareholders or they are in violation of Sarbanes-Oxley and liable for penalties."

For all companies, the new reality mandates a tight, multi-tiered system ranging from asset identification through asset valuation so they can retain value and be harnessed to drive overall performance. For buyers of such assets, it means using the system to screen the target's IP properties and determine whether they're worth buying and have real value. If the target comes up short, it could be forced to take a reduced price or the deficiencies could be grounds for ditching the deal. At a minimum, the IP-savvy buyer would know what steps it must take to get the most out of the acquired assets should it green-light the deal.

Too many companies don't follow that route, and Halligan, despite his more than 20 years of experience in the field, finds it hard to understand why IP neglect persists. "No one wants to spend money prophylactically until the horse is out of the barn," he says. "How can we be an information-based society, where 80% of the assets are technology-related, without having an accounting system in place for identification of these assets? Nobody knows how to identify and classify them. It becomes a standard of care for mismanagement and really is negligence. The reality of the information age is that most assets are trade secrets. In many cases, they're the heart and soul of the company."

SOX has removed discretion from the scene, says Halligan, a partner at Welsh & Katz who also teaches trade secrets law at the John Marshall Law School in Chicago. But corporate managers and directors, who historically ducked IP issues, may not get the message until regulators and shareholders come down hard on them, and he forecasts an upsurge in lawsuits. "I'm shocked that we haven't seen more litigation over the mismanagement of these assets," he says. "Trade secrets have a short shelf life and many companies basically have ignored them."

To reverse the laissez-faire attitude, directors must take a hands-on approach to IP.

"This has been swept under the rug," Halligan asserts. "Negligence in the treatment of these assets has gone on for a long time. Until Sarbanes-Oxley, it was delegated to management. The board of directors basically had no oversight responsibility. Sarbanes-Oxley now imposes oversight functions on financial assets, and this is an asset class. The system has to be in place and there has to be oversight by key managers and directors."

A good IP management system, he notes, includes components to:

* Identify the assets;

* Classify them;

* Protect them to preserve their

value;

* Track the assets so the corporate

owner knows where they are and so

they can be accessed;

* Value them; and

* Calculate and report on changes in

value.

Halligan adds that he has been working on valuation approaches and the most satisfactory one is based on the discounted value of future cash flows the IP asset can generate. Because of growing legal pressures, it's critical, he says, for the company to manage the system proactively rather than farm out IP diligence and valuation to consultants. "Is third-party work satisfactory? Of course not. It's just not good enough."

While all IP is important, Halligan is especially concerned about pressures on trade secrets, which may be unprotected and range from notes on a blackboard to ideas in people's minds. "A trade secret today may not be a trade secret tomorrow," he says. "This is a dynamic process. Once you get burned, you can lose key employees and maybe lose a huge market. You would think that if you get burned you would try to prevent it in the future, but some people get burned three or four times."

TRADE SECRETS CARRY NEW POTENTIAL LIABILITY FOR CEOs AND CFOs UNDER THE SARBANES-OXLEY ACT

Warns Attorney Mark Halligan, Specializing in Trade Secret Law

For Immediate Release

Robin A. Rolfe
Robin Rolfe Resources, Inc.
201.461.6630 ext. 101
rar@robinrolferesources.com
www.robinrolferesources.com

(October 6, 2005 � Chicago, Ill) Recent changes in federal law have created brand new ground rules for corporate trade secrets, which now open chief executive officers and chief financial officers to personal liability, warns attorney R. Mark Halligan, who specializes in trade secrets law and is a partner in the Chicago law firm Welsh & Katz.

Terming them a �sea change in the law� and a �wake up call to corporate America,� Halligan outlines the new requirements and penalties of the Sarbanes-Oxley Act in the article �Duty to Identify, Protect Trade Secrets Has Arisen� in the August 29, 2005 National Law Journal.

Because of the Sarbanes-Oxley Act, companies may no longer treat trade secrets as an amorphous intellectual property right, Halligan cautions. The Act sets new duties of disclosure and governance, which now require publicly traded companies to identify, protect, set a value on, and report trade secrets as a class of assets.

Under the Act, trade secrets must be reflected in quarterly and annual reports, the CEO and CFO must personally certify the reports, and the company must document and certify both the internal control structure and procedures for financial reporting and controls. Of critical importance to officers, the Act imposes civil and criminal penalties for violations of its requirements.

Halligan catalogs prudent practices for complying with Sarbanes-Oxley:

� Identify trade secrets by using both a systematic procedure and a classification scheme (because information assets can range from notes on a blackboard to a secret formula locked in a safe)

� Implement security measures and internal controls to protect trade secrets, by:

o Limiting access to a need-to-need basis

o Defining different levels of access through password protection

o Using tracking systems to control and monitor the distribution of trade secrets after initial access, and to ensure that companies obtain executed non-disclosure agreements from third parties before revealing trade secrets (or risk forfeiting and losing them)

� Set the value of trade secret assets based on the net present value of expected future cash flows to be derived from the competitive advantages conferred by the asset (a value that will be zero, Halligan noted, without reasonable measures to protect the asset)

� Implement adequate internal controls to assure notice to management and timely reporting of material changes or losses related to trade secrets.

Halligan urges officers, directors and top managers to involve themselves actively with trade secret management and security to avoid both civil and criminal liability under the Sarbanes-Oxley Act, as well as shareholder derivative suits for breach of the fiduciary duty to protect intellectual property assets.

A reprint of Halligan�s National Law Journal article is available upon request.

Mr. Halligan is available for interviews and a digital photograph is available upon request.

Trade Secret Mismanagement Now Sarbanes-Oxley Risk

Trade secrets and other intellectual property assets were once the sole responsibility of management, and corporate boards only got involved during large-scale litigation. Not so anymore under Sarbanes-Oxley. �Since trade secrets are financial assets, Sarbanes-Oxley requires adequate internal controls over the procedures by which they are valued and their value reported publicly. At a minimum, U.S. companies must now have a trade secret asset-control committee or a specific corporate officer charged with the responsibility to identify, protect and valuate trade secret assets on a day-to-day basis,� says R. Mark Halligan, an attorney at Welsh & Katz, Ltd. (Chicago) and a leading U.S. trade secrets attorney. �This represents a sea change in the law. It now is clear that the directors and top managers must become actively involved with intellectual asset management and information security, to avoid both civil and criminal liability under Sarbanes-Oxley and shareholder derivative suits for the breach of the fiduciary duty to adequately protect intellectual property assets.� Halligan is available for interviews.

News Contact: Kevin Aschenbrenner

Email: aschk@jaffeassociates.com

Phone: 604-689-1159

The Economic Valuation of Trade Secret Assets The Computer & Internet Lawyer July, 2005

July, 2005

SECTION: TRADE SECRETS; Vol. 22, No. 7; Pg. 4

LENGTH: 4430 words

HEADLINE: The Economic Valuation of Trade Secret Assets

BYLINE: By R. Mark Halligan and Richard F. Weyand; Mark Halligan, Esq., is a principal in the Chicago intellectual property law firm of Welsh & Katz, Ltd. and he also serves on the Adjunct Faculty at John Marshall Law School in Chicago, where he teaches Advanced Trade Secrets Law and Trade Secrets Litigation. A prolific lecturer and writer on the law of trade secrets, Mr. Halligan has sponsored the world-renowned TRADE SECRETS HOME PAGE on the Internet since 1994, and he is recognized nationally as an expert in trade secrets law and the Economic Espionage Act of 1996. Mr. Halligan is a first-chair litigator, and his practice includes all aspects of intellectual property law, Internet law, and related licensing and antitrust matters. In recent years, Mr. Halligan has been at the forefront of several emerging legal practice areas including intellectual asset management (IAM), competitive intelligence and counterintelligence programs, and digital evidence discovery techniques. Richard F. Weyand is the president of The Trade Secret Office, Inc., which is developing methods and software for the automated discovery, inventory, evaluation, and tracking of trade secret intellectual property assets. He has been an engineering professional in the computer software, hardware, and communications field since 1977. Mr. Weyand has also served as a testifying technical expert in trade secrets cases involving computers, communications, and the electronic discovery of evidence.

BODY:
The economic valuation of trade secret assets has perplexed the intellectual property bar for years. The economic and legal issues are seemingly inextricably intertwined. We present here a method for valuation of trade secret assets that decouples the economic and legal issues, rendering the problem tractable.

Kiplinger Business Forecasts

June 13, 2005 Monday

HEADLINE: Firms to Insist That Secrets Stay That Way

BYLINE: George Brandon

SECTION: Vol. 2005, No. 0617

******

Now the concept may be in for an unexpected boost as public companies comply with post-Enron corporate governance rules. Few companies realize it yet, says R. Mark Halligan, chairman of the American Bar Association's trade secrets committee, but the Sarbanes-Oxley Act-which requires executives to attest each year that they're adequately safeguarding company assets-applies in spades to a company's trade secrets and proprietary information as well.

Halligan cites a Brookings Institution study of New Economy companies that showed a complete reversal since the 1970s in the nature of assets held by U.S. firms. While physical assets once constituted an average of 70% of a company's asset value, today intangible assets account for 70%.

Past efforts to protect such strategic information have been lax, Halligan says. As a result, over the next year or two, there'll be a rush by corporate boards to set up separate control committees to protect information. Soon managers, employees and contractors will be routinely required to sign nondisclosure or noncompete agreements.

Most firms are likely to find that the use of nondisclosure restrictions as part of employment contracts will be the most effective approach. Courts in many states are reluctant to enforce noncompete agreements because of their potential to limit employee mobility. Still, questions about enforceability won't deter many firms from requiring employees to sign them. "Corporate counsels love them because employees believe they have to abide by signed contracts," Halligan says, adding that the lawyers figure they can get as much as "80% compliance" simply by asking for it.

*******

R. Mark Halligan, General Editor, Intellectual Property Law 2005 Edition

http://www.iicle.com/booksandproducts/product_description.asp?ID=1088

IT and IP Program Directors Author Chapters in IICLE Handbook

The associate directors for both the Center for Information Technology and Privacy Law (CITPL) and Center for Intellectual Property Law (CIPL) are chapter authors in the new Illinois Institute for Continuing Legal Education (IICLE) handbook on Intellectual Property Law.

Richard C. Balough, associate director of the CITPL is the author of a chapter on Ownership and Transfer of Copyrights. William T. McGrath, associate director for the CIPL is the author of the chapter on Copyright Subject Matter and Exclusive Rights and the chapter on Copyright Infringement, Fair Use and Remedies.

The general editor for the handbook, R. Mark Halligan, is an adjunct professor at John Marshall who teaches Trade Secrets law. In addition, E. Leonard Rubin, who also is an adjunct professor at John Marshall, contributed to the chapter on Legal Issues for E-Commerce Start-Ups to Consider.

The handbook is the first IICLE publication to deal with intellectual property in one publication. The handbook is available from IICLE.

Fundamentals of Intellectual Property Valuation: A Primer for Identifying and Determining Value

Special introductory prices for ABA members and Section of Intellectual Property Law members through June 2005!

Text Box: Chapter 9

The Economic Valuation of Trade Secret Assets

R. Mark Halligan and Richard F Weyand

Hot off the Press:
IPL Valuation Primer

In today�s increasingly complex and highly regulated business environment, the accurate and complete valuation of intellectual property is essential. The Section has just released Fundamentals of Intellectual Property Valuation: A Primer for Identifying and Determining Value. Written by experts in the area, this primer answers some of the most frequently asked questions about identifying the value of the primary types of intellectual property and other intangible assets. It also looks at the primary, traditional, and not-so-traditional methods of valuing these assets, and includes case studies and situations where valuation is required.

Fundamentals of Intellectual Property Valuation answers some of the most frequently asked questions about IP and valuation, including: 1) What is a piece of intellectual property, and what is an intangible asset? 2) When are they the same and when are they different? 3) What are the different groups of intellectual property and how are they described and valued? 4) Do pieces of intellectual property have value? 5) Do they all have value? If not, why not? 6) Is it true that sometimes a given piece of IP can have great value and at other times no value at all, and if so, how can this be?

To learn more about the primer and to order your copy at a special (limited time only!) discounted price, go to
www.abanet.org/abapubs/
books/5370143.

Chapter 9 The Economic Evaluation of Trade Secret Assets by R Mark Halligan and Richard F. Weyand

ABA Journal E-Report Friday, April 15, 2005

NONCOMPETE PACT HITS GEORGIA ROADBLOCK

State�s Ruling Should Have National Effect, 11th Circuit

Says

BY MOLLY McDONOUGH

An insurance executive looking to get out of a noncompete

agreement with his former employer picked the right venue when

he moved and filed suit in Georgia.

The Atlanta-based 11th U.S. Circuit Court of Appeals ruled April 1

that James B. Meathe is no longer bound by one of two

agreements he signed with insurance giant Marsh & McLennan

Cos. Inc. The agreement, from 2002, restricted Meathe from

accepting unsolicited business from former clients.

Georgia frowns on such restrictions in employment agreements

and, unlike many other states, refuses to edit or "blue pencil" them

to save the remaining, acceptable portions of noncompete

agreements.

That�s no surprise to lawyers who follow restrictive covenant trends.

What is more intriguing about the case is the part of the decision

that says the district judge�s declaratory judgment wiping out the

agreement has nationwide force. Palmer & Cay v. Marsh &

McLennan, No. 03-16248.

************************

"The bottom line is that this creates problems for Marsh &

McLennan," says Chicago intellectual property lawyer and trade

secrets expert R. Mark Halligan. "They took reasonable measures

to protect their trade secrets and customer relationships. They did

not anticipate [Meathe] would move to Georgia."

That, Halligan says, may be another lesson from this decision.

When companies draft these post-employment agreements, he

says, they not only have to make sure they comply with their state

laws, but they have to cast an eye toward what may be enforceable

in other states.

*********

Halligan says the decision adds to an already confusing landscape

for companies trying to protect their trade secrets. Especially

confused is the franchise bar, which Halligan says needs to be able

to rely on a more uniform system for enforcing post-employment

contracts.

"State-based statutes are no longer appropriate," Halligan says.

Companies, he says, can�t expect to operate in an environment in

which their former employees can break contracts simply by

changing ZIP codes.

"If this guy had taken a job in any other state, he would have been

sunk," Halligan says. "That�s not the way you protect the intellectual

property rights of a company."

Baseline December 1, 2004 Wednesday

December 1, 2004 Wednesday

SECTION: DOSSIERS; Pg. 32

LENGTH: 5733 words

HEADLINE: Wanted: Chief Espionage Officer;
You've long been on the lookout for hackers who want to do harm to your systems and damage-or steal-your data.

BYLINE: John McCormick and Deborah Gage

You've long been on the lookout for hackers who want to do harm to your systems and damage-or steal-your data. But what if the felon you should fear, now or in the future, is standing next to you? Or works at one of your chief competitors? Here are three cases where top technology executives are accused of stealing trade secrets. And it's a growing problem.

SSF imported auto parts works out of a nondescript building just off the main retail drag in South San Francisco, Calif. In a space half the size of a football field sit rows of metal shelves filled with brake discs, alternators, water pumps and other components for Audi, Mercedes-Benz, Porsche, Saab and Volvo cars. Workers in blue shirts move briskly about, picking and packing parts for delivery overnight to repair shops and dealerships around the country.

Yes, this is a warehouse. But it is also a center for what some security experts worry is a new type of computer crime: Digital espionage. By top technology executives.

SSF's computer systems were repeatedly broken into over seven months starting in early 2001. An FBI agent who investigated the incident said he believed large portions of SSF's electronic catalog of 20,000 car parts were copied, so rivals could build a better catalog. The culprits? The chief technology officer, chief executive officer and a computer consultant for a rival: Dallas European Parts Distributors of Carrollton, Texas. According to the U.S. Attorney's Office in San Francisco, the trio became criminals when they accessed SSF's computers without authorization and illegally trafficked in SSF computer passwords.

Statistics are not kept by federal law enforcement agencies on the number of acts of espionage committed each year by executives and technology managers in this age of worldwide computer networking. But research by Baseline has identified a half-dozen cases of digital espionage that are alleged to have been committed by corporate chief technology officers and information-technology directors in the past two years. The alleged spies include:

The chief technology officer at Business Engine Software Corp. in San Francisco, who pled guilty in July to downloading trade secrets, such as information on customers and products in development, from rival Niku Corp. in Redwood City, Calif.

The information-technology director at Lightwave Microsystems in San Jose, who was indicted in May 2003 on charges of stealing the network equipment maker's Manufacturing Execution Database and other secrets, stored on backup tapes. His alleged intent: sell the secrets to competitor JDS Uniphase. He pleaded not guilty.

The chief technology officer of Speedera Networks, a Santa Clara, Calif., provider of Web hosting and content delivery services; according to a civil suit filed in California Superior Court in Santa Clara County, he allegedly broke into a database at Keynote Systems to steal performance data about Akamai Technologies, a Cambridge, Mass., competitor. Speedera denies any wrongdoing.

The CEO of Orbit Communications, a satellite data reseller, who allegedly recruited technology security consultants to attack the Web sites of three of Orbit's competitors, according to an FBI complaint. The CEO is a fugitive.

The former network and information-technology manager at Manufacturers Electronic Sales Corp. (MESC), a sales representative in Santa Clara, Calif., for electronic component makers. The manager pleaded guilty in August to breaking into the company's computer system from his new employer. He was charged with downloading a customer database, reading e-mail and deleting data, then destroying evidence of the break-in.

**********

Such trade secrets are leaking from U.S. companies at an alarming rate. R. Mark Halligan, a Chicago-based intellectual property attorney, notes a "logarithmic rise" in trade-secret theft cases since 1980. The Justice Department released figures in October that showed intellectual property theft up 26%, from 322 incidents in 1994 to 405 in 2002, and trade-secret thefts up more than threefold, from 28 in 1997 to 92 in 2002.

Chicago Daily Law Bulletin, November 29, 2004

Copyright 2004 Law Bulletin Publishing Company
Chicago Daily Law Bulletin

November 29, 2004, Monday

BODY:
The Intellectual Property Law Association of Chicago will hold its 15th annual Trade Secrets Seminar from 1 p.m. to 4:30 p.m. on Dec. 3 at The John Marshall Law School, 315 S. Plymouth Court, Room 1200.

The featured speakers at the event will be U.S. District Judge John W. Darrah of the Northern District of Illinois; R. Mark Halligan of Welsh & Katz Ltd.; and Todd S. Parkhurst of Holland & Knight LLP.

The speakers will discuss several topics related to intellectual property law, including electronic discovery in trade secrets cases, recent developments in trade secrets law and trade secrets in international commerce

ABA Journal

July 2004

Ideas From the Front

Author: Hope Viner Samborn

p.24

MOVE OVER JAMES BOND: Modern Corporate Spying Tactics Are Subtle , Yet Still Dangerous

*****

�Lines can be blurry and each situation varies,� says R. Mark Halligan, a trade secrets attorney with Welsh & Katz in Chicago and former chair of the ABA Intellectual Property Sections�s Committee on Trade Secrets. That�s largely because companies are gathering competitive intelligence without resorting to James Bond-style tactics like covert entries, wiretapping or computer hacking. More likely, he says, modern-day corporate spies are role-playing at trade shows, reviewing readily available Internet information or scouring government-required documents in an effort to gain the all-important information edge.

******

One situation where strategies can get sticky is the trade show. If a rival company agent poses as a potential customer or supplier to learn trade secrets, that is a misrepresentation that can be actionable under the Uniform Trade Secrets Act, says Halligan. Yet it can be legal to glean information by sitting in on speeches, reviewing media interviews�even commissioning psychological profiles of a competitor�s top brass. In fact, such methods can be gold mines for predictive information, he says.

*****

Wholesalers can also be hit up for information. In the late 1980s, Fuji and Kodak were battling to be the first to bring the disposable camera to market. Wholesalers might have asked about the rival product�s release date. Innocent questions? Perhaps, Halligan says, but answers could turn into legal liability if the wholesaler had a duty of confidentiality based on a nondisclosure agreement.

*****

Corporate clients also need help when competitive intelligence turns up unexpectedly. This often happens, says Halligan, because companies and their employees get lazy, forgoing safeguards such as computer passwords or paper shredders, or failing to think about who can see or hear them in public places.

*****

Regardless of the perils, Halligan applauds corporate clients who come to him with envelope-pushing issues. �You have a fiduciary responsibility to know why your competitors are making money,� he says. �You have to do anything you legally can do to know why.�

July 1, 2004

SECTION: No. 7, Vol. 24; Pg. 42 ; ISSN: 0279-6570

HEADLINE: Stop giving away your secrets: big pharma companies aggressively gather sensitive intelligence about their competitors, but few, strangely, make a systematic effort to protect their own.

BYLINE: Lam, Michael D.

Although corporations are occasional targets of both economic and industrial espionage, their Achilles' heel is inadvertent disclosure.

To be clear, CI, if practiced in accord with the code of ethics of the Society of Competitive Intelligence Professionals (SCIP), is principled and legal. It is surprising, though, what the law allows. For instance, it is not a crime to misrepresent yourself, says attorney R. Mark Halligan of Welsh & Katz. Use of a pretext--"I'm a...student, pollster, headhunter, market researcher, potential investor, journalist, customer, member of a user group"--violates no law. It is, however, a crime to falsely declare yourself to be someone in particular.

How do CI professionals get "85 percent of Americans to cooperate and reveal information valuable to your firm," as CI guru John Nolan claims? They use elicitation techniques to subtly guide the conversation. Nolan's catalog of methods, by no means complete, includes: "provocative statements, disbelief, feigned naivete, criticism, encouraging snivelers and whiners to cry on our shoulders." He also makes the most of "the desire for recognition, tendencies toward one-upmanship, and natural tendencies to correct others when somebody makes a mistake."

Rochester Democrat and Chronicle

June 5, 2004 Saturday Metro Edition

SECTION: METRO; Pg. B1

LENGTH: 586 words

HEADLINE: Clinic doctor in Japan may be extradited;

Lab theft case still active

BYLINE: John Mangels, Plain Dealer Science Writer

BODY:

A Cleveland Clinic scientist who abruptly returned to his native Japan nearly five years ago as the FBI probed the theft of biological material from his lab could be forced to come back to Ohio this spring to face unprecedented economic spying charges.

Japanese officials are expected to begin legal proceedings as early as this month that may lead to the extradition of Dr. Takashi Okamoto, two Japanese news outlets reported, citing government sources.

Robert Wallace, the U.S. Justice Department senior trial attorney who is overseeing the Okamoto case, told The Plain Dealer Monday that American efforts to secure the researcher's return are "ongoing."

"We remain hopeful that the Japanese authorities will make the decision to extradite him," Wallace said, adding that the judgment could occur "relatively soon."

The apparent progress in the high-profile international case after so long surprised some observers, who had thought it might be too politically sensitive to press, or that the U.S. government's focus had shifted away from economic espionage in the wake of the Sept. 11 attacks and the continuing terrorism threat.

"Obviously the Bush administration has given this high priority," said Mark Halligan, a Chicago attorney who specializes in trade-secrets cases. "Maybe the Justice Department is thinking this is the closest they have to an economic 9/11. They want this notch on their belts."

Centre Daily Times

July 6, 2003 Sunday

SECTION: E; Pg. 1

LENGTH: 1275 words

HEADLINE: Spies no surprise

BYLINE: By Tim Barker; The Orlando Sentinel

BODY:
Corporate espionage will continue as long as there are ideas worth stealing

ORLANDO, Fla. -- Every year, secrets worth billions of dollars are stolen from U.S. companies by men and women seeking money, new jobs, revenge or a leg up on competitors.

So, it should have come as no surprise last month when Boeing Corp. revealed that some of its employees may have used a competitor's trade secrets to help win a lucrative government contract in 1998.

After all, in the world of business, corporate espionage is about as old as the wheel itself. Imagine the surprise on its inventor's face when he saw a fellow in the next cave selling an exact replica.

Information thievery takes many forms. It can be as mundane as paying a cleaning crew to steal garbage -- considered a potential treasure trove -- from an executive's office. Or it can be the stuff of spy films, with undercover agents -- Eastern European companies are known for using ex-KGB agents -- infiltrating a company to pilfer secrets.

What these thieves want is just as varied as the techniques they use to get it.

*************************

Still, some experts say the biggest threat to a company's secrets comes from within.

Too often, companies fail to recognize the importance of what they possess, said Mark Halligan, an attorney with Chicago-based Welsh & Katz, which specializes in intellectual property laws.

"Our whole society is based on the right to copy what your competitor does," he said.

The only way to protect inventions and ideas is through patents, trademarks, copyrights and trade secrets. The latter is the most difficult, requiring a company to strive to keep something secret. And that means more than just forcing employees to sign a contract saying they won't disclose anything important, Halligan said.

"Most U.S. companies are negligent. They have no system to identify and protect their trade secrets," he said. "Usually, there's just some boilerplate contract that all employees sign, and nobody knows what it means."

Grand Forks Herald June 28, 2003 Saturday

*****

One of the more unusual scams - sometimes referred to as "help wanted" - uses a person posing as a corporate headhunter who approaches an employee of the targeted firm with a potentially lucrative job offer.

During the interview, the employee is quizzed about his responsibilities, accomplishments and current projects. The goal is to extract important details without the employee realizing there is no job.

And then there is the business of using foreign intelligence officers - the downfall of the Soviet Union left many former spies out of work - to infiltrate U.S. firms.

Still, some experts say the biggest threat to a company's secrets comes from within.

Too often, companies fail to recognize the importance of what they possess, said Mark Halligan, an attorney with Chicago-based Welsh & Katz, which specializes in intellectual property laws.

"Our whole society is based on the right to copy what your competitor does," he said.

The only way to protect inventions and ideas is through patents, trademarks, copyrights and trade secrets. The latter is the most difficult, requiring a company to strive to keep something secret. And that means more than just forcing employees to sign a contract saying they won't disclose anything important, Halligan said.

American Society for Industrial Security
Security Management

April 1, 2003

SECTION: No. 4, Vol. 47; Pg. 34; ISSN: 0145-9406

IAC-ACC-NO: 100390877

The definition of "information" is at the heart of a recent federal court ruling that immunizes Internet service providers (ISPs) against lawsuits from customers whose computers get infected by malicious code that reached them through the ISP's network.

The case, John Green v. America Online, involved a situation in which one subscriber had sent another a "punter," a small program that knocked a second subscriber off the system and temporarily froze his computer; the second subscriber sued America Online (AOL). Recently, the United States Court of Appeals for the Third Circuit affirmed a lower court's ruling against the plaintiff.

***********

R. Mark Halligan, principal in the Chicago intellectual property law firm of Welsh & Katz, says the ruling may have far-reaching consequences for companies if it is interpreted to mean that ISPs now have no motivation to monitor, screen, and remove trade secrets or other intellectual property infringements posted to the Web. Halligan notes that the plaintiff in this case had also charged that subscribers, in addition to freezing his computer, had posted defamatory material about him, and that AOL had been negligent in removing that material after he complained about it.

But the court wrote that the plaintiff was attempting "to hold AOL liable for decisions relating to the monitoring, screening, and deletion of content from its network--actions quintessentially related to a publisher's role." As a publisher or speaker of information originating from another information content subscriber, AOL is cloaked in immunity, says Halligan.

The decision referred to a 1997 case, Zeran v. America Online, Inc., in which the court noted that ISPs "who regulated the dissemination of offensive material on their services risked subjecting themselves to liability" and so had no motivation to develop technologies such as filters, which parents could use to restrict their children's access to adult material. Under Zeran, an ISP becomes a publisher when it receives notice of a potentially defamatory posting and "must decide whether to publish, edit, or withdraw the posting." However, the law "forbids the imposition of publisher liability on a service provider for the exercise of its editorial and self-regulatory functions." The Green decision extends this immunity beyond defamatory material to include what Halligan calls "shoddy practices in responding to serious situations."

Halligan explains that before Green, if companies could make a good-faith showing that they had a proprietary right to information illegally posted on the Internet, ISPs were normally responsive to requests to remove that material, because they were afraid to be exposed to any liability. But if ISPs are not liable for negligence or malfeasance in eradicating postings or protecting the intellectual property rights of a company, it appears that companies will have no cause of action against them, he says.

So, while ISPs may act appropriately to be good corporate citizens, they have little motivation to do so, according to Halligan. As a result, companies that spend millions on protecting intellectual property could see that property destroyed by a single disgruntled employee who posts it to a chat room, where it remains for a significant period of time. "There's something wrong with that," he says. "There's got to be severe liability for any malfeasance or negligence that occurs along the way." He says that future case law, perhaps based on the decision in this case, will decide if this becomes the norm.

SHOW: Marketplace Morning Report (5:50 AM ET) - SYND

January 3, 2003 Friday

LENGTH: 191 words

HEADLINE: College student charged with violating Economic Espionage Act

ANCHORS: KAI RYSSDAL

REPORTERS: JUDY MARTIN

BODY:

JUDY MARTIN reporting:

This case may not rate 007's interest. Nevertheless, we're talking about espionage, a 19-year-old college student charged with getting his hands on and sharing secret documents that could help others steal satellite TV signals. Only around three dozen cases have been filed claiming violation of the 1996 Economic Espionage Act. R. Mark Halligan is a trade secrets expert at John Marshall Law School in Chicago.

Mr. R. MARK HALLIGAN (John Marshall Law School): "The standard of proof is a very high one, and you have to prove the case beyond a reasonable doubt. And when you're dealing with (technical difficulties) ...intellectual property rights, in this case--trade secret rights...the burden of proof is very difficult unless you have smoking-gun evidence."

MARTIN: Halligan says the act was passed when foreign spies, looking for new work after the Cold War, were snooping into the secrets of US corporations. In New York, I'm Judy Martin for MARKETPLACE.

Crain's Chicago Business

November 18, 2002, Monday
SECTION: Pg. SR1

HEADLINE: Yours, mine or ours?; Intellectual property conflicts arise from new ways of working

BYLINE: Lisa Bertagnoli

********

As more employees use personal computers and personal digital assistants (PDAs) for work-related purposes-and company equipment for personal business-workers and employers are finding it difficult to sort out who owns what when they part company. The stakes can be high. Corporations risk losing highly sensitive information, business and money. Ms. Walters says computer-related squabbles have cost her upwards of $100,000.

Individuals risk losing their intellectual property, such as software programs or other data they've developed, if it's downloaded onto a machine owned by their employer.

The problem is ''huge and underappreciated,'' says R. Mark Halligan, a trade secret expert and principal at the Chicago law firm Welsh & Katz Ltd.

It's a complicated mixture of ownership and privacy issues.

''It's ownership from the standpoint of who owns the equipment,'' Mr. Halligan says. ''The privacy issue relates to whether the employer has the right to see, read and review files stored in the computer.''

Business technology has evolved more quickly than the law, meaning disputes these days are settled on a case-by-case basis, largely because U.S. privacy laws are underdeveloped, Mr. Halligan explains.

He advises his clients to buy all the laptops and PDAs employees use for work purposes. That way, the company has the right to seize the equipment immediately, which is crucial to protecting information.

''You want to be able to immediately investigate,'' Mr. Halligan says. ''It's just like in the old days, when employees turned over their keys and were immediately escorted from the building.''

********

Welsh & Katz's Mr. Halligan advises clients to issue strict policies forbidding the use of personal equipment for company work and vice-versa. Again, control is at stake: A company cannot demand employees relinquish their personal property before leaving the company.

''The employee can say, quite rightly, 'This is mine. I want to get stuff off of it and then I'll give it to you,' '' Mr. Halligan says.

A strict policy has kept Spirian Technologies Inc., a Chicago-based software development firm, free from property battles.

*********

That leads to Mr. Halligan's final piece of advice for companies: Tell employees they have no expectation of privacy in e-mail on company computers.

That differs from voice-mail, where employees can reasonably expect privacy, Mr. Halligan says. Access to both e-mail and voice-mail generally requires a password, but the rules of privacy are different: There is a lasting record of all e-mails sent and received, he explains, which is not the case with voice-mail.

International concerns

Privacy takes on a whole new meaning for international employees, for whom such agreements must be spelled out in excruciating detail.

The European Union's privacy statutes are much different than those in the U.S. and almost completely favor employees, Mr. Halligan says. Contracts with international employees should spell out which country's laws will decide disputes, in what country any lawsuit would be filed and under which country's jurisdiction the employee will fall.

As business technology evolves, experts like Mr. Halligan ... see property waters becoming muddier.

Anticipating a day when cell phones and PDAs become mini computers, for instance, Mr. Halligan already is telling his clients to purchase cell phones for employees, as well as laptops.

ABI/INFORM

Across the Board

July, 2002 / August, 2002

SECTION: Vol. 39, No. 4; Pg. 50-55; ISSN: 01471554; CODEN: ACBODW

B&H-ACC-NO: 138828161

DOC-REF-NO: CBR-2061-27

LENGTH: 2836 words

HEADLINE: Working the crowd

BYLINE:

SKIP KALTENHEUSER is a writer and lawyer in Washington who writes on politics, international trade, business ethics, law, and travel.

*******

Company secrets are often most vulnerable at out-of-office meetings, particularly trade shows and multi-company conferences. Analysts state that trade and consumer shows are ideal for gathering primary data because of the high percentage of attendees who make purchase decisions and the many analysts and media people attending the event, as well as the announcements of mergers, acquisitions, and product launches that take place well in advance of coverage in publications. Yet meeting planners usually give little or no thought to keeping privileged corporate information out of the hands of competitors. A great debate rages over the ethics of information collection. Professionals are careful to point out that skilled information-seekers can derive all they need to know by staying within legal and ethical limits.

********

What's OK to Say?

Unfortunately, lack of formal valuation procedures means that IP assets are not tracked in corporate accounting systems and, therefore, appropriate protection of those assets often falls short.

The modern definition of trade secrets is "any information that can be used in the operation of a business or other enterprise that is sufficiently valuable and secret to afford an actual or competitive advantage over others," says R. Mark Halligan, a partner in the Chicago law firm Welsh & Katz who teaches trade-secret law at John Marshall Law School.

********

Trade shows can result in a major loss of trade secrets. Says Halligan: "The problem is identifying the it. What is the trade secret? Companies need to conduct trade secret audits. Then the firm's employees who attend the trade shows can be told what matters they can comment on and what matters or information they cannot talk about."

But most companies don't conduct such audits. "They do not know what is and is not a trade secret," Halligan says, "so employees are not properly briefed before the trade show or conference. Take the example of new-product-development plans. Certain aspects of the new-product development may or may not be trade secrets. Where do you draw the line? Can the employee at the trade-show booth state that the company is coming out with new product X or not? Can she provide certain descriptions of the functionality of the new product?"

************

An unprotected disclosure to a third party instantly destroys the right to maintain and protect the trade secret.

"It's like pricking a balloon with a needle," Halligan says. "It doesn't matter whether the third-party recipient of the information is a priest, a college professor, or an agent for a head-to-head competitor-if the company representative at the trade-show booth voluntarily disclosed the information, any trade-secret rights are forfeited as a matter of law."

TIME MAGAZINE May 20, 2002

Trade Secrets:

Psst! Got a Great Idea?

Here's how to grow your business without giving away your trade secrets

By Laird Harrison

Pages B19-20 (Time GLOBAL BUSINESS MAY 2002)

*******

Most managers know that employees are legally bound not to disclose their employers' secrets. But once a company shares information with a business partner, those secrets are no longer protected; the partner and its employees are free to use the information unless they're bound by a non-disclosure agreement, explains Chicago intellectual-property attorney R. Mark Halligan. (LynkUs and Medical Manager signed such an agreement, which will probably be a focus of the trial set for November).

*******

May 15, 2002, Wednesday

SECTION: FINANCIAL NEWS

LENGTH: 1673 words

HEADLINE: Analysis: The industrious spies - III

BYLINE: By SAM VAKNIN, UPI Senior Business Correspondent

DATELINE: SKOPJE, Macedonia, May 15

The cases of individuals and companies committing industrial espionage are rampant, but the problem is not limited to single unhappy employees and firms trying to find out their competitors trade secrets.

But even countries get involved, which brings us to Echelon. Exposed on March 2000 by the European Parliament with great fanfare, this telecommunications interception network, run by the United States, United Kingdom, New Zealand, Australia and Canada has become the focus of bitter mutual recriminations and far flung conspiracy theories.

These have abated following the terrorist attacks of Sept. 11 when the need for an Echelon-like system with even laxer legal control was made abundantly clear. France, Russia and 28 other nations operate indigenous mini-Echelons, their hypocritical protestations to the contrary notwithstanding.

But, with well more than $600 billion a year invested in easily pilfered research and development, the United States is by far the prime target and main victim of such activities rather than their chief perpetrator.

******

There have been dozens of prosecutions under the EEA. Companies -- such as "Four Pillars" which stole trade secrets from Avery Dennison -- paid fines of millions of dollars. Employees -- such as PPG Inc.'s Patrick Worthing -- and their accomplices were jailed.

Foreign citizens, like the Taiwanese Kai-Lo Hsu and Prof. Charles Ho from National Chiao Tung university, were detained. Mark Halligan of Welsh and Katz in Chicago lists on his Web site more than 30 important economic espionage cases tried under the EEA by July 2001.

The EEA authorizes the FBI to act against foreign intelligence gathering agencies toiling on U.S. soil with the aim of garnering proprietary economic information. During the Congressional hearings that preceded the law, the FBI estimated that no less that 23 governments -- including the Israelis, French, Japanese, Germans, British, Swiss, Swedes and Russians, were busy doing exactly that. Louis Freeh, the former director of the FBI, put it succinctly, "Economic espionage is the greatest threat to our national security since the Cold War."

********

The John Marshall Law School Center for Intellectual Property Law: News Source Winter 2002; Vol. III, No. 4, Pages 26-27

Adjunct Faculty: R. Mark Halligan

(Feature Story)

Recognized nationally as an expert in trade secrets law, R. Mark Halligan sponsors the Trade Secrets Home Page on the Internet (tradesecretshomepage.com). He is a principal in the Chicago intellectual property law firm of Welsh & Katz, Ltd., and the current President of the Intellectual Property Law Association of Chicago (IPLAC). As a member of the adjunct faculty at John Marshall, Halligan teaches Advanced Trade Secrets Law and Trade Secret Litigation in the Intellectual Property Law LL.M. Program.

Halligan has a close relationship with Mel Jager, also a member of the John Marshall adjunct faculty, and a dean of the trade secrets bar. "I was honored when Mel Jager asked me to take over his teaching duties in trade secrets law in 1994," Halligan says.

Halligan is a prolific writer and speaker and will present "Recent Developments in Trade Secrets Law" at the upcoming Annual Conference on Developments in Intellectual Property Law on February 28, 2002, at the Center for Intellectual Property Law at The John Marshall Law School.

Students enjoy the depth of study of the law of trade secrets in Professor Halligan's classes and his enthusiasm for the law of trade secrets. "Trade secrets will be the intellectual property right of choice in the Information Age" is a familiar theme in Professor Halligan's writings and speeches.

"There is no other trade secrets class offered in the United States that is as intensive as this Advanced Trade Secrets Law class," say Professor Halligan. "We cover the evolution of trade secrets law, from Roman times to the modern development of the law of trade secrets, reviewing key events along the way, including the original Restatement of Torts Section 757, the seminal decision of the Supreme Court decision in Kewanee Oil v. Bicron, the Uniform Trade Secrets Act, the Restatement (Third) of Unfair Competition, and the Economic Espionage Act of 1996. I tell my students that when they complete my course on Advanced Trade Secrets Law they too will be experts in trade secrets law. I am very proud of the opportunity to teach this course in John Marshall's elite LL.M. program in intellectual property law."

Careers Section: "It's All in Your Head: Understanding Your Intellectual Property Rights Could Help You Protect Your Ideas and Save You a Lifetime of Legal Hassles" By Harry Goldstein, Senior Associate Editor, IEEE Spectrum Magazine (March 2002) pp.66-68,79.

*****************

"Where an employee's IP rights end and an employer's begin is at the heart not only of DSC/Alcatel v. Brown, but of hundreds of similar cases filed each year in the United States, according to leading trade secrets attorney R. Mark Halligan of Chicago law firm Welsh & Katz, Ltd.

*****************

Had Brown excluded his idea from the DCS contract, he could now claim full ownership rights according to Chicago attorney Halligan. "Evan Brown claims that the conception of this idea occurred many years before he went to work for this company," said Halligan. "Therefore, as a matter of law, the company has no rights to the idea unless Evan Brown executes a contract conveying those rights to the idea to the company," which is exactly what DSC/Alcatel claims Brown did when he signed the IP contract.

*****************

Just what constitutes a trade secret is fairly-open-ended. In a pamphlet entitled "Trade Secrets and the Inevitable Disclosure Doctrine," trade secrets attorney Halligan provides a partial list: from formulas, procedures, and source codes to customer lists, strategic business plans, and sales forecasts--essentially anything that gives a company a competitive advantage and is not generally known.

*****************

But not undisclosed ones [ideas] according to Halligan. "Under no set of circumstances can an employer claim trade secret rights in 'something' that has not been disclosed by the employee." Halligan noted, "because without knowledge of the 'it,' there can be no competitive advantage to the employer, or reasonable measures [taken] to protect 'it'."

Crain's Chicago Business January 28, 2002

Keeping secrets

More firms suing to protect proprietary information

January 28, 2002

By Alby Gallun

****

They're worried about top executives making off with high-level strategic

information, sales representatives leaving with customer lists and engineers

and research and development types stealing technical data about top-secret

research projects.

The risk of that happening has increased, too, as workers have become

more mobile -- and less loyal, some observers say. And recent job cuts

have put a lot of people back on the street, along with any company secrets

they may be carrying in their heads.

"Your trade secret is a person who walks and talks," says R. Mark Halligan,

a Chicago attorney and past chairman of the American Bar Assn.'s Committee on Trade Secrets.

Stealing a company's proprietary information is also a lot easier, thanks

to technology. With laptop computers, Zip drives and e-mail, larcenous

employees have more tools at their disposal to spirit away company secrets.

A study commissioned by the American Society for Industrial Security

found that Fortune 100 companies lost more than $45 billion in 1999 from

the theft of trade secrets.

"You can come in on a Monday morning and be fleeced and you wouldn't know it," Mr. Halligan says.

****

House Counsel November/December 2001 Volume 6 No.6

Copyright@2001 Dalily Journal Corporation

Spy versus Spy: Competitive Intelligence (pp.19-21)

Skip Kaltenhauser

**********

Major IP losses at trade shows, says R. Mark Halligan, a partner with Welsh & Katz in Chicago, often result because company employees don't know what they are permitted to reveal. "Can an employee at an exhibit booth state that the company is coming out with a new product?" Halligan asks. "Can he or she provide certain descriptions of the functionality of a new product? The employee at an exhibit [booth] doesn't know what he or she can and cannot say without clear direction from the company."

**********

Although most legal actions to protect trade secrets remain in civil court, the "reasonable measures" criteria is still a factor. In a trade show setting, Halligan believes "reasonable" means giving employees clear instructions as to what they can and cannot say, hiding trade secret prototypes from public view, and requiring nondisclosure agreements from all third parties who are exposed to the trade secret information.

Nondisclosure agreements should be more carefully constructed than standard boilerplate forms, Halligan says. because an unprotected disclosure to a third party instantly destroys the right to maintain and protect the trade secret. "It doesn't matter whether the third-party recipient is a priest, a college professor, or an agent for a head-to-head competitor," says Halligan. "If the company representative at the trade show booth voluntarily disclosed the information, any trade secret right is forfeited as a matter of law."

Subject: NLCPI's Business Law and Policy Vol. 1 No. 1
From: bakst@nlcpi.org
Date: Thu, 25 Oct 2001 15:39:41 -0500 (CDT)
Delivered-To: nlcpi-outgoing@cygnus.imagiware.com
Reply-To: bakst@nlcpi.org

TRADE SECRETS AND THE INEVITABLE DISCLOSURE DOCTRINE:
AN INTERVIEW WITH R. MARK HALLIGAN, PARTNER AT WELSH & KATZ.
**************
R. Mark Halligan is the author of NLCPI's new monograph entitled Trade
Secrets and the Inevitable Disclosure Doctrine. To learn more about this
publication, please visit:
http://www.nlcpi.org/books/welcome.htm

Coming Soon: NLCPI Monographs on Regulation FD (by Jared L. Kopel) and
Disparate Impact (by Roger Clegg).

****************

NLCPI: What is the definition of a trade secret, and what are some examples
of trade secrets?

Halligan: The modern definition of a trade secret protects "any information"
that can be used in the operation of a business or other enterprise and that
is sufficiently valuable and secret to afford an actual or potential
economic advantage over others. The definition of "information" encompasses
negative know-how, for example. Knowing "what doesn't work" (Negative
know-how) is often as valuable, if not more valuable, than positive know-how
or information.

NLCPI: If an employer does not want a trade secret to be disclosed by a
former employee, what kind of remedy does the employer have?

Halligan: The law imposes an implied obligation on every employee not to
disclose or use the trade secrets of the employer for his(her) own personal
benefit or the benefit of others either during or after employment absent
any agreement whatsoever.

Contract law can provide additional protection for trade secrets if properly
drafted but no written agreement or contract is required to protect the
employer's trade secrets vis-a-vis an employee. The courts impose an
implied obligation of confidentiality as a matter of law.

NLCPI: What factors are considered by courts when determining whether to
issue an injunction?

Halligan: Injunctive relief is the lifeblood of trade secrets law. The
issuance of an injunction is an extraordinary remedy. The courts have a long
track record of issuing injunctions in trade secret cases. In any equitable
proceeding requesting the issuance of an injunction in a trade secrets case,
the Court will weigh the employer's interest (to protect trade secret
assets), the employee's interest (to protect employee's mobility and choice)
and the public interest (to protect free and fair competition).

NLCPI: Where does the inevitable disclosure doctrine fit into the law of
trade secrets--what is this doctrine?

Halligan: Once the horse is out of the barn, it is too late. Without
effective injunctive relief, the intellectual property right in trade
secrets could not survive or prosper. The extent of the property right in
trade secrets is determined by the extent to which owners of trade secrets
protect their interests from disclosure to others. A trade secret, once
lost, is lost forever.

The "inevitable disclosure" doctrine is as old as the law of trade secrets
It is a coined term used to describe the entry of injunctive relief to
prevent the "threatened" misappropriation of trade secrets.

NLCPI: What important case law exists on the inevitable disclosure doctrine?

Halligan: There are many, important cases that support the rationale for the
inevitable disclosure doctrine. The recent decision by the 7th Circuit in
Pepsico v. Redmond, has created the most fanfare.

NLCPI: There has been criticism of the PepsiCo v. Redmond case--what are
the arguments and are they valid?

Halligan: There has been criticism but, in my opinion, the criticism is
unwarranted. Based on the record in the Pepsico v. Redmond case, Pepsico
was clearly entitled to injunctive relief to protect against the
"threatened" misappropriation of trade secrets now that Redmond was working
for Gatorade. (Note: Pepsico has a competing sports drink product)

NLCPI: What is the interrelationship between the law of restrictive
covenants and trade secrets?

Halligan: These are two different branches of law but there is an overlap.
One of the legitimate employer interests justifying the contractual validity
of a restrictive covenant is the protection of trade secrets. However,
restrictive covenants often are not well suited vehicles for the protection
of trade secrets. For example, if you have a perpetual trade secret (such
as the Coca Cola formula), reasonable time restraints--one of the
requirements for the enforcement of a restrictive covenant--makes no sense.
Once again, contracts are not required to protect trade secret rights.

NLCPI: Will inevitable disclosure doctrine cases continue to increase?

Halligan: Absolutely. We are entering the Information Age. There are more
trade secret assets to protect and the Seventh Circuit decision in Pepsico
v. Redmond--by a highly respected Federal Court of Appeals--has validated
the "inevitable disclosure " doctrine as an indispensable doctrine in trade
secrets law.

********
About R. Mark Halligan:

R. Mark Halligan, Esq. is a nationally recognized expert on trade secrets
law. He is a principal in the Chicago intellectual property law firm of
Welsh & Katz, Ltd. and the sponsor of The Trade Secrets Home Page on the
Internet (tradesecretshomepage.com). Mr. Halligan was recently elected as a
Fellow of the American Bar Foundation. He serves on the adjunct faculty of
the John Marshall Law School in Chicago where he teaches Advanced Trade
Secrets Law and Trade Secrets Litigation in the L.L.M. program.
Mr. Halligan is the immediate past Chairman of the ABA Committee on Trade
Secrets and the current President of the Intellectual Property Law
Association of Chicago (IPLAC). For further information, see
www.rmarkhalligan.com. Mr. Halligan's e-mail address is
rmhalligan@nixonpeabody.com.

Welsh & Katz: http://www.welshkatz.com/
The Trade Secrets Home Page: http://tradesecretshomepage.com/

*************************************************
National Legal Center for the Public Interest
1776 I Street, 9th Floor
Washington, DC, N.W. 20006
Phone: (202) 756-4883
Fax: (202) 756-1552
E-mail: bakst@nlcpi.org
Web: http://www.nlcpi.org

MEETINGS WEST--SEPTEMBER 2001

www.meetings411.com

ESPIONAGE!

Buyers beware: Corporate Spooks can infiltrate your meetings

By Skip Kaltenhauser

*******

"The modern definition of trade secrets protects "any information that can be used in the operation of a business or other enterprise that is sufficiently valuable and secret to afford an actual or competitive advantage over others," says Mark Halligan, a Chicago-based lawyer with Welsh & Katz who teaches trade secrets law at John Marshall Law School.

"Trade shows can result in a major loss of trade secrets, Halligan maintains-- The problem is identifying the 'it'".

"What is the trade secret?" he [Halligan] asks.

"Companies need to conduct trade secret audits to identify their trade secrets. Then employees who attend the trade shows can be told what matters they can comment on --non-trade secrets--and what matters and information they cannot talk about--trade secrets."

The problem, Halligan says, is that most companies do not conduct trade secret audits.

"They do not know what is and what is not a trade secret, so employees are not properly briefed before the trade show or conference, " he says. "Take the example of new product development plans. This may or may not be a trade secret. Certain aspects of the new product development may or may not be a trade secret. Where do you draw the line? Can the employee at the trade show booth state that the company is coming out with a new product 'X' or not? Can he or she provide certain descriptions of the functionality of the new product 'X,' but not others? How does the employee at the trade show know what he can or cannot do without clear direction from the company onf the identification and status of trade secret rights?"

In a trade show setting, Halligan believes this means clear instruction to attendees on behalf of the company as to what they can and cannot say, hiding trade secret prototypes from public view and requiring nondisclosure agreements from all third parties who are exposed to the trade secret information.

"It is like pricking a balloon with a needle," Halligan says. "It doesn't matter whether the third-party recipient is a priest, a college professor, or an agent for a head-to-head competitor. If the company representative at the trade show booth voluntarily discloses the information, any trade secret rights in the information is forfeited as a matter of law."

Halligan is also involved [special advisor] with The Trade Secret Office, Inc. a company that creates software that identifies and tracks a company's trade secret and other privileged information.

*********

Society Of Competitive Intelligence Professionals<o:p </o:p

Competitive Intelligence Magazine Volume 4 � Number 4 � July-August 200

CI NEWSWATCH

Fifth Anniversary for the Economic Espionage Act Brings Changes

In 1996, when Congress was debating the act, a letter from U.S. Attorney General Janet Reno was included in the Congressional Record stipulating that, for the act's first five years, an EEA indictment would only be pursued with the express prior approval of the Attorney General, Deputy Attorney General, or Assistant Attorney General - Criminal Division. As this provision expires in October 2001, regional field offices will be able to bring EEA indictments without receiving prior approval from the highest levels of the U.S. Justice Department.

According to R. Mark Halligan, a partner at Welsh & Katz, Ltd., and one of the nation's leading authorities on trade secret law, there is no reason to expect U.S. attorneys at the district level to issue a rash of indictments. "The bar for bringing an EEA prosecution will remain extraordinarily high," says Halligan. He notes that the EEA applies only to "clearly illegal activities, such as the theft or buying of trade secrets."

The owner must have taken "reasonable measures" to keep the information secret. The information must not be generally known in the trade and not "readily ascertainable through proper means. Moreover, as a federal criminal statute, guilt under the EEA must be proven "beyond a reasonable doubt," as opposed to the weaker burden under a civil suit of "a preponderance of evidence."

This means, Halligan says that local U.S. attorneys will be wary of bringing cases that could be thrown out of court for lack of evidence. "The EEA will not be invoked for activities in the 'gray area,;" he says, but only for "clear cut criminal activity."

Ziff Davis Media CIO Insight (August 2001 Issue)

CIO Insight Strategies
Spies Like Us

By Skip Kaltenheuser and Keith Epstein

[SKIP KALTENHEUSER writes about technology
and legal issues from Washington, D.C. KEITH
EPSTEIN is an investigative reporter based in
Fairfax, Va.]

The Internet is rewriting the rules of corporate
rivalry, and CIOs are being forced to the front
lines.

http://www.cioinsight.com/

* * * * * *

Once the best data is tagged for collection, who
gets access to it? "If you search, say, for data
involving a two-in-one laundry soap and fabric
softener, what terms do you classify, and which do
you let everyone see?" Steinhardt says. Her point:
CIOs can help companies figure out how to tag,
gather, store and distribute a wide range of
competitive data with differing levels of access and
indexing�and with standards that are consistent
throughout the company, domestically and abroad.
"Most companies are sloppy about this," says R.
Mark Halligan, a professor of trade secret law at
The John Marshall Law School in Chicago. "They
haven't marked documents as confidential. And
nobody beyond a certain level knows what,
specifically, they're looking for. They just know they
want something, and fast. And with a proliferation of
business relationships these days�joint ventures,
M&As, supply-chain collaborations and so
forth�you really need to do an information audit to
make sure you know what you have and what you
need."

* * * * * *

The Plain Dealer<o:p </o:p July 30, 2001 Monday, Final / All<o:p </o:p SECTION: NATIONAL; Pg. A1<o:p </o:p LENGTH: 3832 words<o:p </o:p HEADLINE: Clinic case is first use of new law;<o:p </o:p Statute aims at economic espionage that benefits a foreign government<o:p </o:p BYLINE: John Mangels, Plain Dealer Science Writer ************** The Economic Espionage Act enables prosecutors to go after two levels of business spying. One type of case, described under Section 1832, is simple theft of trade secrets - a person steals sensitive information or materials to benefit anyone other than the information�s owner.<o:p </o:p The other type of case, spelled out in Section 1831, is in a higher league, with tougher penalties and broader impact. It covers situations where a thief swipes trade secrets meant to help a "foreign government, foreign instrumentality or foreign agent."<o:p </o:p By its nature, a Section 1831 case is potential diplomatic dynamite. Even if an eco-thief acted alone, and the country that stood to gain from the business spying didn�t sanction the espionage or know about it in advance, the charge could be embarrassing.<o:p </o:p "You have to think long and hard before you file a case that has international implications," said Chicago attorney R. Mark Halligan, who specializes in intellectual property issues.<o:p </o:p That was one of the reasons Congress wanted senior Justice Department officials - either the attorney general, his deputy or the head of the criminal division - to personally OK every prosecution in the first five years of the Economic Espionage Act. No one wanted some junior-level government attorney getting ambitious and causing an international incident. **********************

The toughest issue for Okamoto's defenders, though, will be the allegations
of sabotage and the claims that he attempted to disguise the thefts.

"You need something that indicates the defendant knew he was doing something
wrong," said Halligan, the trade secrets attorney. "In this case, it's filling
up the vials. I think that's the nail in the coffin. If [someone] thought they
had the right to take the material, why cover it up?"

**********************

Chicago Daily Law Bulletin<o:p </o:p June 26, 2001, Tuesday<o:p </o:p SECTION: Pg. 3<o:p </o:p LENGTH: 126 words<o:p </o:p HEADLINE: In the bar associations<o:p </o:p The Intellectual Property Law Association of Chicago inducted its new officers during its recent annual meeting. They are:<o:p </o:p R. Mark Halligan, president; Linda A. Kuczma, president-elect; Robert M. Barrett, vice president; William H. Frankel, secretary; and Debbie K. Wright, treasurer.

Preventing Business Fraud May 2001

********************** <o:p </o:p Identify information leaks quickly. Keeping an eye on the Web pays off if you discover someone has posted private company information. Timely discovery is critical, because once a trade secret is posted on the Web, it is at serious risk of losing its protected status. The longer the information is available to the public, the greater the likelihood that it will lose protection. To read legal rulings that impact confidential information protection, we recommend The Trade Secrets Homepage by R. Mark Halligan (http://mhallign.fp. execpc.com), a trade secrets law professor and attorney for Welsh & Katz (Chicago)

********************

The News and Observer (Raleigh, NC) April 17, 2001

***** Lee Rainie, director of the Pew Internet & American Life<o:p </o:p Project, says one of the most intriguing issues related to the<o:p </o:p anti-site movement is the question of who has the right to own<o:p </o:p these domains. "Who gets to create the fill-in-the-name-dot-sucks<o:p </o:p site?"

******* <o:p </o:p

<o:p </o:p Domains are easily purchased from a variety of services,<o:p </o:p usually at a cost of $ 70 for two years. Some are available for<o:p </o:p less or free as long as the purchaser doesn't mind the Internet<o:p </o:p hosting company slapping advertisements on the page.

******<o:p </o:p

<o:p </o:p "We've seen a number of responses by individuals and, in<o:p </o:p particular, companies to try to limit the damage these things are<o:p </o:p doing," Rainie says. "But you know, we have free-speech rights in<o:p </o:p this country that protect this stuff. Clearly, one of the things<o:p </o:p that is going on is that people are using the Internet to get out<o:p </o:p their opinions in all kinds of ways, not only because they like<o:p </o:p things but because they don't like things." <o:p </o:p ********* <o:p </o:p "[T]he First Amendment protects things that are not nice,"<o:p </o:p says R. Mark Halligan, a Chicago lawyer who tracks so-called<o:p </o:p "John Doe" subpoenas. "It protects these statements. If it<o:p </o:p constitutes criticism or opinion or a person's philosophy, that's<o:p </o:p all protected."

<o:p </o:p

InformationWeek (March 12, 2001)

http://www.iweek.com "Watch Your Step With Secrets -- When leaving a job, it's wise to leave behind anything remotely resembling a trade secret" ******** If you take a suspected trade secret, you could be the subject of a<o:p </o:p civil or criminal inquiry. All sorts of things can be alleged to be trade<o:p </o:p secrets, and unless you're keen on paying an attorney $300 an hour to explore<o:p </o:p the subject, it's best to leave specific company work behind. "Unlike patents,<o:p </o:p copyrights, and trademarks, there is no official certificate issued by the<o:p </o:p government that says 'this is our trade secret,'" says attorney Mark Halligan, <o:p </o:p chairman of the American Bar Association's committee on trade secrets. </o:p "Trade secrets are created or destroyed as a result of the litigation process."

CNN MONEYLINE NEWS HOUR February 20, 2001

******* R. MARK HALLIGAN, AMERICAN BAR ASSOCIATION:" Unlike patents, copyrights and trademarks, there is not an official piece of paper issued by the federal government that says this is your trade secret. And it�s been my experience that many times companies don�t have adequate trade secret protection programs."

Crain�s Chicago Business February 19, 2001

********* Whatever the outcome of the lawsuit, such cases have become more common in recent years, says R. Mark Halligan, a lawyer at Chicago-based Welsh & Katz Ltd., who is quoted in the book.<o:p </o:p The proliferation of computers has made it easier to generate information and move it-even to places it shouldn�t go. According to a study by the American Society for Industrial Security and PricewaterhouseCoopers LLP, Fortune 100 companies lost more than $45 billion in 1999 from thefts of proprietary information.<o:p </o:p "Today, you can carry the whole company out on a floppy disk in your shirt pocket," says Mr. Halligan.<o:p </o:p A lot of companies have inadequate policies to keep their proprietary data from getting into the wrong hands, Mr. Halligan adds. "Most of these trade-secrets thefts occur because the company didn�t do enough to protect them."

The Boston Herald, February 2, 2001 Friday

********

R. Mark Halligan, a Chicago law professor and chairman of Trade Secrets Committee of the American Bar Association, said most companies lose secrets because they have sloppy policies.<o:p </o:p

"What a good competitive analyst will do is take what appear to be disparate and discrete pieces of information and put those pieces together into a mosaic in which they can make predictions on what a competitor is doing," he said. ************

The Associated Press State & Local Wire January 21, 2001

<o:p </o:p The Vermont Supreme Court is considering a case that could affect the future of high-technology development and trade secrets in Vermont, according to lawyers on both sides of the case.<o:p </o:p Omega Optical sued Chroma Technology and 10 former employees in 1996, saying they stole trade secrets when they left Omega to found Chroma in 1991.<o:p </o:p Both Brattleboro firms make precision optical thin-film filters, used in a variety of industrial, scientific and research applications.<o:p </o:p But a lower court found that Omega had not done enough to protect what it considered its trade secrets and that the company hadn�t warned its employees of possible consequences of using the information. It refused to award $20 million in damages to Omega, a decision which Omega appealed.<o:p </o:p Omega suffered significantly when the employees left after refusing to sign confidentiality and no-compete agreements, according to Omega�s attorney, R. Mark Halligan of Chicago. "This was an inside job, this was a conspiracy," Halligan said at the court hearing Friday.<o:p </o:p Lawyers for both sides tried to convince the Vermont Supreme Court to adopt their definition of trade secrets.<o:p </o:p The former Omega employees took leaders from virtually every department to form Chroma, he said. Halligan said that there was only one company in the world, Omega, to develop the unique technology. The people who founded Chroma learned what they needed to know at Omega and left, he said.<o:p </o:p Halligan said that Omega trade secrets were not protected under traditional patent law because the technology was developing so quickly.<o:p </o:p "In the research and development environment, there was a patent every day of the week," Halligan said.

*************

Security Director�s Report<o:p </o:p February 2001 HEADLINE: How to Protect Your Company From Its Own Information <o:p </o:p <o:p </o:p Tallying up the damage. The top 1,000 public companies lost more than $ 45 billion last year due to the theft of proprietary information, according to the American Society for Industrial Security (ASIS) and PricewaterhouseCoopers. That is twice the amount that companies lost five years ago, according to the FBI. Top targets of snoops: Research and development plans, product specifications, customer lists, staffing scenarios, strategic partnerships, and advance notice of financial deals. *********** Identify information leaks quickly. Keeping an eye on the Web pays off if you discover someone has posted private company information. Timely discovery is critical, because once a trade secret is posted on the Web, it is at serious risk of losing its protected status. The longer the information is available to the public, the greater the likelihood that it will lose protection. To read legal rulings that impact confidential information protection, we recommend The Trade Secrets Home-page, by R. Mark Halligan (http://mhallign.fp. execpc.com), a trade secrets law professor and attorney for Welsh & Katz (Chicago;312-526-1559). *********

The News and Observer (Raleigh, NC)<o:p </o:p December 3, 2000 Sunday, FINAL EDITION<o:p </o:p SECTION: BUSINESS WORK & MONEY; Pg. E1<o:p </o:p LENGTH: 1392 words<o:p </o:p HEADLINE: C&C fights Web postings<o:p </o:p BYLINE: Carlene Hempel, Staff Writer <o:p </o:p In the only case of its kind in North Carolina, Charles & Colvard is suing four people who have posted anonymous complaints about the company on Yahoo�s e-mail message board. ******* In C&C�s case, the Morrisville manufacturer of artificial jewels claims the message posters, who may be current or former employees, shared confidential information and made disparaging and false comments about the company, and it has already gone to court to get their identities.<o:p </o:p "Our purpose is not to shoot down chat rooms," says Press Millen, the attorney at Womble Carlyle Sandridge & Rice representing C&C. "But these chat rooms potentially can have an impact on the market for a company�s stock."<o:p </o:p C&C stock has dropped from $ 7.50 a share in July to a 52-week low of $ 1.38 Friday.

*******

In an era when competition is intense and the stock market is volatile, companies are chasing after anything that threatens consumer and investor confidence, says R. Mark Halligan, chairman of the American Bar Association�s committee on trade secrets and unfair competition.<o:p </o:p "These lawsuits were almost nonexistent until this year, and now, all of a sudden, there have been a whole rash of them," said Halligan, who counts more than a dozen so far this year, including a victory by Biomatrix, a biomedical company, in a libel case against three men who posted anonymously on Yahoo! what a judge called "extremely offensive and malicious" messages.<o:p </o:p "The [posts] amount to cyber-smear attacks on companies that can have very devastating damages," Halligan said. "If you go into one of these chat rooms and you make a malicious and false statement, you can actually tank the stock." ****** "I think companies are using the allegation of cyber-smear essentially to go to the Internet service providers to get their identities so they can harass these people with lawsuits," said Halligan of the ABA. "Under those circumstances, you have a very serious First Amendment concern."

******

Halligan has another theory. He thinks the people who post messages using handles instead of their names believe they will remain anonymous - that the Internet companies will not honor requests to hand over identities - and that the normal rules of etiquette therefore don�t apply. But that�s just not the case.<o:p </o:p

"If I went out today and told people Bill Gates is a crook, I�d be subject to a defamation claim," he said. That�s the law. "And just because I type that on a computer doesn�t make a difference."

ASAP<o:p </o:p

Copyright 2000 American Society for Industrial Security <o:p </o:p Security Management<o:p </o:p October 1, 2000<o:p </o:p <o:p </o:p SECTION: No. 10, Vol. 44; Pg. 36 ; ISSN: 0145-9406<o:p </o:p IAC-ACC-NO: 66496907<o:p </o:p LENGTH: 1594 words<o:p </o:p HEADLINE: Global Reach Brings Global Legal Liability; American Bar Association<o:p </o:p researching international jurisdiction of web sites; Brief Article<o:p </o:p BYLINE: HAROWITZ, SHERRY L.

***********

Companies are slowly awakening to a new threat created by the Internet, but it�s not coming from hackers or virus writers. "The Internet has become a vehicle for the destruction of trade secret rights," explains attorney R. Mark Halligan of Welsh and Katz Ltd.<o:p </o:p

The problem is that a trade secret loses its special legal status once it becomes widely known. Thus, if proprietary information is placed on an Internet discussion board or other publicly accessible forum, it will lose its protected standing-and its value-unless the company can get it removed immediately. But that can be difficult to achieve.<o:p </o:p One problem is that the Internet�s size complicates the task of monitoring. Many major corporations now assign in-house or outside teams to search the Internet around the clock for any reference to the company, says Halligan. Some disclosures are unintentional. For example, Halligan has been involved in several cases where former employees gave out detailed descriptions of wor kprojects in their online resumes. The workers� intent was to demonstrate their abilities to prospective employers, but the result was the disclosure of confidential information. In those instances, says Halligan, the material was quickly removed when the former workers were informed of the problem.

SUCCESSFUL MEETINGS MAGAZINE (OCTOBER, 2000) Bill Communications, Inc.

"DECENT PROPOSAL, INDECENT ACTION--Idea Theft Has Some Planners Mad. How Can You Be Sure You Won't Be The Next Victim? (pp.117-123)

BY REBECCA MEANY

*********************

"The 1974 Kewanee Oil Co. vs. Bicron Corp. decision paved the way for idea protection," says R. Mark Halligan, a Chicago-based attorney and chairman of the American Bar Association Intellectual Property Law Section. "Previously, there had been no recourse for the little guy who presented an idea to a company, only to have the organization adopt the idea as its own."

******************

Often, companies will ask people to sign an idea submission form. "Don't do it," Halligan emphatically states. "This eliminates their obligation of confidentiality and relinquishes your legal rights to own your ideas."

*****************

Some planners put a copyright symbol on their proposals, but as Halligan notes, this only protects the originality of expression, not the underlying ideas. By marking "confidential' on your documents, you inform the company that they are under a legal obligation to keep the information a secret. "If they're not willing to take it confidentially," says Halligan, "don't give it to them."

****************

"Whether or not an invention is patentable (and it just may be), it is protected by trade secret law," says Halligan. "The law protects any information, technical or nontechnical, if the information is not generally known in the trade and reasonable measures are taken to protect it as a trade secret."

***************

"Novelty is not required for trade secret protection," explains Halligan.

*******************

"An obligation of confidentiality can be established orally," asserts Halligan. "If you have a third party as witness, it can hold up in court."

AMERICA'S NETWORK MAGAZINE

Leading Analysis of the Telecom Community --www.americasnetwork.com

September 15, 2000 Volume 104 Number 14 (pp. 22-24)

"Stealing Secrets: The theft of corporate secrets is frustrating companies that attempt to stay competitive in high-tech's cutthroat environment."

By Shira Levine

***********************

"It's a fine line between what constitutes an employee's general knowledge, and what constitutes his employer's trade secrets," says R. Mark Halligan, partner at Chicago law firm Welsh & Katz and chairman of the American Bar Association's committee on trade secrets and unfair competition. "If you have an employee who came to work for you for a year after being in the industry for 20 years, that's a very different situation than if you have an employee who has spent his entire career with you and then leaves. You're talking about general knowledge versus knowledge that is specific to your technology. But there are many gray areas in between."

*******************

"The problem with trade secrets, says Welsh & Katz's Halligan, is that once they're exposed, they're gone forever. Preventative measures are the best protection, but many companies are reluctant to take action."

********************

Halligan advocates implementing a need-to-know policy--identifying only the absolute minimum number of employees who have access to sensitive information. He also recommends that companies compartmentalize information, splitting it among employees so that no one single person has access to all the pieces of the puzzle.

ITworld.com

MOVING TO A NEW JOB?

Protect Yourself Against an Inevitable-Disclosure Lawsuit

David Essex (August 30, 2000)

******************************

[Negative know-how] ....[without trade secret protection] ..competitors could potentially get milllions of dollars worth of a company's research and development for free, said R. Mark Halligan, an attorney at Welsh & Katz in Chicago. Halligan maintains an informational Website on related legal issues and is chairman of the American Bar Association' Trade Secrets and Interference with Contracts committee.

Negative knowledge's relevance usually depends on whether the new employer has built up the same technology bank as the old employer. If it has gone through similar trial and error to develop a product, the employee's negative knowledge has little value. But if the competitor gets a head start from the new employee's experience, then it has an unfair advantage, Halligan said.

[The inevitable disclosure doctrine]. "It's often misused," Halligan said. "It's often applied to an employee regardless of the circumstances. A lot of this goes on without the employee ever having been told what's a trade secret."

June 25, 2000 Sunday, FINAL EDITION<o:p </o:p SECTION: NEWS; Pg. A1<o:p </o:p LENGTH: 2041 words<o:p </o:p HEADLINE: E-companies wage tug-of-war with ex-employees over trade secrets<o:p </o:p BYLINE: Carlene Hempel, STAFF WRITER<o:p </o:p

********

In many ways, the Sapiens case and a growing number like it demonstrate the complicated nature of intellectual property rights and trade-secret protections in the new e-marketplace, where dot-com dollars are as much about who knows what as they are about who can build the best gadget.<o:p </o:p

The enemy in many of these cases isn�t a competitor rifling through trash cans or an industrial spy hacking into the computer system late at night. It�s the companies� own employees. ************ Software companies are driving that change, says R. Mark Halligan, a lawyer in Chicago and chairman of the American Bar Association�s trade-secret division. Securing patents for each product would be foolish, he says, because they change so often and their shelf life is limited.<o:p </o:p "Trade secrets is the only way for them to protect their property," he says. So, that means the number of cases is increasing. Since 1970 Halligan has kept track of how often cases are mentioned in the press. In 1995, he counted about 1,400. In 1999, he counted about 5,500.

Entrepreneur Magazine (July 2000)

Entrepreneur.com

Vol. 28, No.7

MANAGEMENT SECTION by Ellen Paris ( Page 44)

NEXT STEP

"For more details about trade-secret laws, click over to www.rmarkhalligan.com and click on the link to "Trade Secrets." Run by R. Mark Halligan, chairperson of the American Bar Association's Committee on Trade Secrets, this online resource summarizes decisions, gives viewers a guided tour of trade-secret law and explains how to set up a trade-secret-protection program."

CIO Magazine (April 15, 2000)

Choose Your POISON

Should you patent your business practices or keep them secret? Both paths are fraught with peril.

BY JENNIFER BRESNAHAN

***************

Two seemingly unrelated business trends combine to bring a second intellectual property peril to executives. One is the increased mobility of the workforce. Nobody knows better than an IT manager how fast employees come and go in today's economy. At the same time, more and more companies are choosing to bypass the patent system and protect their intellectual assets by simply keeping them secret, says R. Mark Halligan, partner in the Chicago law firm Welsh & Katz. Each of those phenomena makes the other more troubling.

*****************

By comparison, confidentiality or nondisclosure agreements between employers and employees usually are enforceable, and are an effective way to protect trade secrets. They force employers to identify their trade secrets, and put employees on notice. "Otherwise, the employee may make an unauthorized disclosure to a competitor without even being aware that it's a trade secret," says Halligan. Identifying a trade secret is as simple as a manger or executive declaring it is secret. There is no legal aspect in the identification process; lawyers come in to draft contracts that will prevent employees from stealing those secrets.

*****************

.
For companies, however, stupidity and ignorance is never an excuse. Companies can run afoul of the law even if they have no intention of using or stealing trade secrets. If an employee is hired because of her specialized knowledge, the courts assume she will not start at page one. Rather, she will probably use the knowledge obtained in her former job. "intent is not the issue," explains Halligan. "The court will find it inevitable that [she] will disclose the trade secret."

*****************

.
CIOs and all other executives need to be extra sensitive to trade secret law because they could be held personally liable for failing to take reasonable measures to protect a company's secrets, says Halligan. This theory has yet to be tested in court, but the signs indicate that courts are moving in this direction. "Executives are responsible for protecting the physical assets of a company, so why not also the intangible intellectual assets?" says Halligan. "The law is just starting to develop. I think you'll start to see shareholder suits and liability where the court finds no trade secret protection of a company's key assets, [causing] the company to lose significant value."

Information Today April 1, 2000

Publication of Millennium Intelligence: Understanding and Conducting Competitive Intelligence in the Digital Age was timed to coincide with the 15^th annual Conference of the Society for Competitive Intelligence Professionals (SCIP), which was held in Atlanta from March 29 to April 1, 2000. According to the announcement, the SCIP Conference is the leading event in the competitive intelligence field.

As defined by SCIP (http://www.scip.org), competitive intelligence (CI) is "the process of ethically collecting, analyzing, and disseminating accurate, relevant, specific, timely, foresighted, and actionable intelligence regarding the implications of the business environment, competitors, and the organization itself." In Millennium Intelligence, Jerry P. Miller and a dozen subject experts ("The Business Intelligence Braintrust") take an in-depth look at the ways in which businesses can and do use CI today.

The Business Intelligence Braintrust is Jerry P. Miller (Skills, Behaviors & Cultures, Small-Business Intelligence), Kenneth A. Sawka (Locating an Intelligence Unit), Michael A. Sandman (Analytical Models & Techniques for Intelligence), Helene Kassler (Information Sources for Intelligence), Rebecca O. Barclay and Steven E. Kaye (Knowledge Management), Bonnie Hohhof (The Information Technology Marketplace), James Pooley and R. Mark Halligan (The Legal Aspects of Intelligence), Clifford C. Kalb (Conducting Intelligence Ethically), John A. Nolan and John F. Quinn (Corporate Security & Intelligence), and Guy Kolb (The Future of Intelligence, with Jerry P. Miller and the Braintrust).

Copyright 2000 The Washington Post

The Washington Post

March 18, 2000, Saturday, Final Edition

SECTION: FINANCIAL; Pg. E01

LENGTH: 1405 words

HEADLINE: In a Bind Over Non-Compete Clauses; More Workers Caught in Grip Of

Required Agreements

BYLINE: Kenneth Bredemeier , Washington Post Staff Writer

***

R. Mark Halligan, a Chicago lawyer specializing in trade secrets, said:

"Non-competes are very necessary when a company identifies what its competitive

advantage is. Eighty percent of employees will abide by them because they signed

them. The fact is they're abused. They're contracts of adhesion. There's no

bargaining [over the terms] and that's an abuse."

The National Law Journal

January 31, 2000, Monday

SECTION: INTELLECTUAL PROPERTY; Focus on Trade Secret; Pg. C12

LENGTH: 2056 words

HEADLINE: Computers spark surge in use of trade secrets

BYLINE: BY R. MARK HALLIGAN, SPECIAL TO THE NATIONAL LAW JOURNAL; Mr. Halligan

is a principal at Chicago's Welsh & Katz Ltd. He is the chairman of the ABA

Committee on Trade Secrets and Unfair Competition. He is also on the adjunct

faculty of John Marshall Law School, where he teaches advanced trade secrets

law, and he is the sponsor of the (tradesecretshomepage.com) Trade Secrets Home

Page.

HIGHLIGHT:

At the same time, technology, particularly the Internet, offers a means of

destroying secrets.

The National Post, January 25, 2000

January 25, 2000 Tuesday NATIONAL EDITIONS

SECTION: FINANCIAL POST; Pg. C10, Working World

LENGTH: 379 words

HEADLINE: Who owns what's in your head? Information age employers are staking

claims

Can you keep a secret? In an increasingly cutthroat business environment,

more employees are grappling with restrictions on what they can say, for whom

they can work -- even how they can use ideas they think up on company time.

Employers are imposing such restraints in an extreme effort to guard any

information they believe provides a competitive advantage. 'This is the

battleground of the new millennium,' says R. Mark Halligan, a Chicago lawyer

specializing in trade secrets. 'It involves the right to freely compete and the

right of employers to protect their livelihood, and that's a very fine line in

the information age. It's become a fertile ground for litigation.

It is that question of who owns what's in your head."

Copyright 2000 Gannett Company, Inc.

USA TODAY

January 19, 2000, Wednesday, FINAL EDITION

SECTION: NEWS; Pg. 1A

HEADLINE: Does your company own what you know?

BYLINE: Stephanie Armour

BODY:

"This is the battleground of the new millennium," says R. Mark

Halligan, a Chicago lawyer specializing in trade secrets. "It

involves the right to freely compete and the right of employers

to protect their livelihood, and that's a very fine line in the

information age. It's become a fertile ground for litigation.

It is that question of who owns what's in your head."

Office.com: Trade Secrets in Cyberspace

December 20, 1999

The growth of the Internet has made assets like source

codes as valuable to a company as a factory, according to

Mark Halligan, chair of the American Bar Association's (ABA)

Trade Secrets and Interference with Contracts Committee.

The Internet also makes it easy to copy and transfer the

secrets.

***********

When an employee leaves, or is planning to leave, your

company and you have reason to believe that your trade

secrets are walking out the door with him, that is the time

to act. "You don't have to wait until the horse is out of the

barn," says Halligan.

Business Week December 6, 1999

Business Week Frontier: The Resource for Entrepreneurs and Small Business

Page F.16 Legal Means: Silent Partners

Cites http://rmarkhalligan.com

Online Extra: Here's what a sample nondisclosure form might look like.

Ragan Communications

Business Intelligence Insider

Vol. 1 Issue 1 (November 1999)

New Federal Cases Reveal EEA Risks

"The EEA clearly applies to people who are on the receiving end" of an information exchange, says Asst. U.S. Attorney Eric Klumb, who filed a case last month in U.S. District Court in Milwaukee charging a former employee of Replacement Aircraft Parts Co. (RAPCO) with violating the EEA.

But what of cases where it's unclear the source of the sensitive info? The feds won't likely go after those cases, since they are looking for "lay-down cases," believes R. Mark Halligan, a Chicago-based attorney specializing in trade secret law. But there is a "general rule that says if I have knowledge of a crime, I have to report it."

JAFFE ASSOCIATES

Kevin Aschenbrenner

(250) 770-8610

COMPETITIVE INTELLIGENCE 101

CHICAGO ATIORNEY KEYNOTES COURSE ON BUSINESS INTELLIGENCE TRAINING

A one-of-a-kind seminar next week will give Chicago-area executives a chance to learn what some call the business survival skill of the new millennium: competitive intelligence gathering.

Beginning September 26, the 5-day course will equip participants with both the theory 0 effective competitive intelligence practices as well as hands-on experience in gathering information. Attendees will be taught how to gather information at trade shows, use psychological profiling to predict the behavior of competitors, and distill essential information from the internet, news articles, and trade press. To practice what they�ve learned, attendees will be sent out into the field with specific intelligence� gathering assignments.

The course is offered by The Centre for Operational Business Intelligence, a Minneapolis-based organization founded in 1997 to address the critical need of business to gather meaningful information not available through traditional sources. The Centre�s instructors come from both government and business, and many are former FBI and CIA academy faculty.

This is the first time The Centre will offer its course in Chicago, and the program will feature Chicago-area attorney R. Mark Halligan as both an instructor and keynote speaker on the opening night of the course. Halligan, an attorney with the intellectual property law firm of Welsh & Katz, Ltd., is a national expert on trade secrets law who assists companies and organizations with protecting the information that is vital to their business. He is a founding member of The Centre and sits on its board of directors.

Halligan�s talk will cover trade secrets law, the Economic Espionage Act of 19% and other legal information participants will need to effectively plan and implement a competitive intelligence strategy. Most importantly, Halligan will underscore the fact that gathering competitive intelligence is a completely legal activity.

"The notion that competitive intelligence gathering is somehow illegal is a complete misnomer," says Halligan. "It doesn�t run afoul of the law unless improper means are used to gather information."

In fact, says Halligan, businesses that shy away from gathering information on competitors will not be in business for long.

"To survive in this highly competitive, information-based economy that we live in, it�s critical for businesses to know what competitors are doing," he says.

foodCompliance.com

Trade Secrets: Protecting the Life Blood of Your Company"

By Keith Nunes, MEAT&POULTRY (August, 1999)

******************

"A trade secret is any information, technical or non-technical, that provides a company with a competitive advantage in the marketplace," says Mark Halligan, a member of the law firm Welsh & Katz, Chicago, Ill., and an expert in trade secret litigation. "This can range from product formulations to modified pieces of equipment, which are powerful intellectual property rights that have been ignored for years. Today, companies are realizing the value of trade secrets and starting to protect and defend them."

****************

"It's difficult to draw a line between the general knowledge skills of an employee and trade secrets," says Halligan. "However, companies that hire employees away from competitors should take steps to ensure they do not put that person in a position where proprietary information could be communicated."

*******************

Halligan says it is critical new employers make every effort to avoid a conflict, because a new employee doesn't have to utter a single word to communicate a trade secret. "For example, say Company A spent $1 million to see if Process X will solve a problem and it doesn't," he says. "Then the company spends $1 million more to see if Process Y will solve the problem. It doesn't do the job either. Finally, the company spends $1 million to see if Process Z will solve the problem and it does.

*****************

Halligan also offers some advice. "Company executives should get up every morning and ask why their company is making money," he says. "The answer is the company's greatest asset and every executive should do whatever he or she can to protect that information."

RISK DECISIONS

Newletter No. 3 (May 1999)

Information Security is More Than Computer Security

***********

The National Counterintelligence Center and the U.S. State Department reported recently that 74 U. S. corporations reported more than 400 incidents or suspected incidents of economic espionage by foreign companies. According to attorney R. Mark Halligan, the FBI is investigating more than 800 cases under the Economic Espionage Act of 1996.

You are probably saying to yourself, "my company is too small and unimportant to be targeted or we don't have any information that is valuable." This is a perfectly understandable emotional response to situations involving fear and/or risk. The facts are that industrial sabotage (the stealing of trade secrets) is fairly common, and well reported. It is also true that the competitive value of any company is the value of its know-how, or information base.

The Augusta (Ga.) Chronicle

May 1, 1999, Saturday, ALL EDITIONS

SECTION: ABC, Pg. O20

LENGTH: 1665 words

HEADLINE: SECURITY IS THE KEY TO WINNING SPY GAME

EXECUTIVES TAKE GREAT MEASURES TO PREVENT RIVALS FROM UNLOCKING CORPORATE

SECRETS

BYLINE: Frank Witsil; Staff Writer

Some of the first criminal prosecutions under the Economic Espionage Act of

1996 are just reaching the courts. Attorney R. Mark Halligan has compiled

several of them on a Web site, http://tradesecretshomepage.com/indict.html

Spies have many tools at their disposal. Tiny cameras and microphones,

smaller than Abe Lincoln's head on a penny, are allowing spies to record

conversations and take pictures of sensitive equipment. Hackers are breaking

into computer systems. And employees, lured by the promise of long titles and

fat paychecks, are going to work for competitors and telling them what they

know. Many businesses don't know that they've been a target until it's too late, he

said. ''You have to take safeguards,'' says Bill Bohling of Regents Security,

another local security company, because once information is stolen, the only

recourse is a lawsuit.

Since the Economic Espionage Act of 1996 was passed, more than a dozen people

have been arrested, and the FBI is investigating more than 800 cases, according

to information compiled by attorney R. Mark Halligan.

April 9, 1999

HEADLINE: Policy Analysis Confronts �Confusion and Anxiety� Over Economic

Espionage Act; �Misplaced Fear� Should Not Curtail Collecting Data About

Competitors

DATELINE: ALEXANDRIA, Va

More than two years after its passage, the U.S. Economic Espionage Act (EEA) has not affected the practice of competitive intelligence (CI), other thancausing misplaced fears among some executives regarding the legal collection of information about business competitors, according to a Policy Analysisapproved by the Society of Competitive Intelligence Professionals (SCIP) board of directors. "Companies that have curtailed their competitive intelligence efforts out of a misplaced fear of the EEA have awarded a competitive advantage to companies whose CI activities continue unimpeded," declares the analysis, to be presented on April 28 at SCIP�s 14th Annual International Conference and Exhibit, in Montreal.

The analysis, Competitive Intelligence and the Economic Espionage Act, was reviewed and endorsed by leading legal experts, including R. Mark Halligan, a principal of Welsh & Katz Ltd., in Chicago. EEA prosecutions "involve trade secret theft and bear no reasonable relationship whatsoever to legitimate competitive intelligence activities," says Halligan, who teaches trade secrets law at John Marshall Law School. "The EEA," he continues, "does not materially affect competitive intelligence activities and companies should not curtail competitive intelligence activities based on a �misplaced fear� of the EEA. In fact, just the opposite is true. Companies should increase competitive intelligence activities to meet the challenge of an increasingly global competitive environment."

COMPUTERWORLD

(Online News, 03/05/99 05:12pm)

Raytheon Seeks IDS of "Chatters"

BY Kathleen Ohlson

*****************

R. Mark Halligan, a professor at the John Marshall Law School in Chicago, said Raytheon "is moving quickly to stop [any trade secrets] from leaking out." Still, just because an item appears on the Internet, it doesn't automatically mean the public has actually seen something, he said. Some sites are visited by limited numbers of people.

Also, some companies don't explain what falls under trade secret status, leaving employees unsure, he said. But if the employees knowingly discussed or disclosed proprietary information they weren't authorized to use, they wouldn't be "protected by trade secret status," Halligan said.

The Arkansas Democrat-Gazette, November 08, 1998

November 08, 1998, Sunday

SECTION: BUSINESS MATTERS; Pg. BM13

LENGTH: 443 words

HEADLINE: LAW;

Corporate Arkansas pushed for trade secret law

BYLINE: ROGER HUGHLETT, ARKANSAS DEMOCRAT-GAZETTE

The Arkansas Trade Secrets Law basically makes it a statutory offense to steal

proprietary information from a company. Interpretation of the law can get

complicated, but the intent is to protect businesses from information being

stolen, said R. Mark Halligan, a Chicago lawyer who has argued cases on both

sides of trade secret disputes.

"The computer revolution began in the 1980s," he said. "You can carry out an

entire company on a floppy disk now."

Not only is transporting proprietary information easier, but certain business

strategies and plans can be committed to memory. That makes it impossible for a

security guard to detect a trade secret walking out the door.

Making it illegal to take that information to a competitor could save a company

millions of dollars -- if not its very existence.

*********

When Walton was recruiting key people away from competitors, no one questioned

the practice. There were no federal or state laws that protected companies from

doing what Wal-Mart did in the early years.

Betsy Reithemeyer, spokesman for the company, denied that Wal-Mart ever stole

employees from its competitors. But the company's top two executives -- David

Glass, chief executive, and Donald Soderquist, chief operating officer -- came

from other retailers.

Soderquist was not hired for his specific knowledge, Reithemeyer said. He was

hired for his "general leadership ability." But what if at some point Soderquist

took advantage of what he learned at Ben Franklin? Could he have broken the law?

It's debatable, said R. Mark Halligan, a Chicago lawyer who specializes in

trade secret battles. What is clear, however, is that in most cases, the

knowledge an employee gains through employment belongs to the employer.

"The obligation not to disclose or use your former employer's trade secrets

continues to exist after the termination of the employer-employee relationship,"

Halligan said.

*******************

The suit said employees owed the company a "duty of loyalty and, in some

instances, further owed Wal-Mart certain fiduciary duties," even after leaving

the company.

Most companies do not ask as much of their employees, Halligan said. "Every

agent owes certain loyalty to the principal, and every principal owes certain

loyalty to the agents," he said, but Wal-Mart takes the idea of loyalty to a new

level.

Information Week News in Review (October 26, 1998)

Top IT Secrets

Businesses are taking steps to guard IT resources as the battle for key technology and top-notch talent keeps escalating

By Justin Hibbard, with Marianne Kolbasuk McGee and Clinton Wilder

Wal-Mart Stores Inc. filed a lawsuit on Oct. 16 against Amazon.com and Drugstore.com for allegedly raiding its IT staff to gain access to trade secrets*****

"There was a lot of evidence about how these guys were very skilled software developers," says Mark Halligan, a lawyer at Welsh & Katz Ltd. in Chicago who represented Deluxe. "The dividing line between what constitutes trade secrets of the employer vs. general skills of an employee is a very fine line."

Database August 18, 1998

August 18, 1998

SECTION: No. 4, Vol. 21; Pg. 23; ISSN: 0162-4105

IAC-ACC-NO: 20965099

LENGTH: 4804 words

HEADLINE: Economic Espionage.

BYLINE: Page 11, Ruth

It is one thing to define a "trade secret" legally. It is another to

determine if something is a trade secret. In the past, civil cases decided

whether information was a trade secret. Lawyer R. Mark Halligan

(http://tradesecretshomepage.com) says that even the definition of a trade

secret is a gray zone. According to Halligan, common sense guidelines include:

* How many people know it? The fewer people who know it, the more likely it

is to be secret.

* Is it known in the trade? If it is known in the trade, even if not by the

public, then it is not secret.

* Have security measures been taken to protect it?

* Can the information be easily duplicated by competitors?

* What is its value to the company?

* How much time, effort, and money was spent developing it?

The Idaho Statesman

March 1, 1998, Sunday

SECTION: Business ; Pg. 1e

LENGTH: 867 words

HEADLINE: MICRON TECHNOLOGY TAKES SECURITY SERIOUSLY

Firm fears visitors will give away trade secrets

BYLINE: By Tracy Loew

SOURCE: The Idaho Statesman

Achieving that balance - between a community's right to know about

potentially harmful operations and its desire to attract and retain businesses -

is something that communities across the country are struggling with, said

Mark Halligan, a Chicago lawyer who specializes in trade secret cases.

Lawsuits involving theft of trade secrets have increased from 18 cases in

1970 to 220 cases in 1996, Halligan said.

And Halligan's database search turned up 4,303 articles about trade secrets

in 1996, compared with four in 1970.

********************

None of the two dozen industry and government officials contacted for this

story could cite an Idaho company that had been damaged by the release of a

trade secret.

But, officials said, the potential for damage is there.

Said Halligan, ''The future of the nation depends in no small part on the

efficiency of industry, and the efficiency of industry depends in no small part

on the protection of intellectual property.''

WHAT'S A TRADE SECRET?

The term ''trade secret'' means 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 and codes.

But information is only a trade secret if:

7 The owner has taken reasonable measures to keep the information secret.

7 The information has independent economic value from not being generally

known to the public.

Chicago Lawyer

April, 1998

SECTION: Pg. 6

LENGTH: 1257 words

HEADLINE: Intellectual property litigators have no patent on manners

BYLINE: Lynne Eckert Gasey

********************

Other speakers during the two-day conference included Carla R. Michellotti,

senior vice president and associate general counsel of Leo Burnett Co.; R.

Mark Halligan, partner at Welsh & Katz; William T. McGrath, partner at Davis,

Mannix & McGrath; and Mark V. B. Partridge, partner at Pattishall, McAuliffe,

Newbury, Hilliard & Geraldson.

CHICAGO LAWYER

February, 1998

SECTION: Pg. 12

LENGTH: 2618 words

Seminars and such

R. Mark Halligan of Welsh & Katz, Ltd. was among the panelists for a

Cambridge Institute seminar on Protecting Trade Secrets in Illinois."

Business Dateline;

Business Record-Des Moines IA

December 29, 1997

SECTION: Vol 93; No 52; pg 14

LENGTH: 1033 words

HEADLINE: Sell a secret, go to jail

BYLINE: Bill Day

IT'S THE LAW

Congress, deciding that state statutes, common law and civil remedies weren't

tough enough, decided to criminalize the theft of trade secrets.

Now intellectual property lawyers closely follow any developments. One, R.

Mark Halligan, has set up a trade secrets Web page, listing the four

indictments that have been handed down so far under the new law.

Rochester Democrat and Chronicle

Gannett News Service

January 12, 1998, FINAL EDITION

SECTION: Pg. ARC

LENGTH: 776 words

HEADLINE: Kodak lawsuit against 3M has makings of U.S.-Italian legal quagmire

BYLINE: STEVE ORR; Rochester Democrat and Chronicle

BODY:

ROCHESTER, N.Y. -- Savona, a small port city on the picturesque

Italian Riviera, is not all that different from Rochester.

A regional town sometimes overshadowed by much larger neighbors,

Savona is nonetheless a center of global film manufacturing.

And because of that unlikely nexus, Savona and Rochester now are

the settings for an unusual trans-Atlantic legal battle between

GANNETT NEWS SERVICE, January 12, 1998

Eastman Kodak Co. and 3M Corp. The first stage of that battle

begins this week in a Rochester courtroom.

Trade-secret spats are increasingly common, but the nature of

this case -- worldwide competitors spewing charges of espionage

and poor business practices over two continents -- is highly unusual,

experts say.

Kodak and its legal opponents each could spend $ 1.5 million on

the parallel lawsuits, lawyers estimated privately.

"I expect this to be a very aggressively litigated lawsuit,"

said R. Mark Halligan, a Chicago intellectual property lawyer.

"Intellectual property litigation is very, very expensive. The

stakes are high."

LAWYERS WEEKLY USA

97 LWUSA 993 (December 15, 1997) Issue 97-25 p. 1, 12-13.

More and more companies are getting injunctions to prevent former employees from competing against them -- even though they never signed a non-compete agreement. The injunctions are based on the theory that the employee will inevitably make use of a "trade secret" of the old company....It's "a powerful tool" says Mark Halligan, an intellectual property litigator in Chicago.

"Trade secrets get much more respect from courts now," says Halligan.

THE WASHINGTON POST

The Washington Post

December 09, 1997, Tuesday, Final Edition

SECTION: FINANCIAL; Pg. C01

LENGTH: 1296 words

HEADLINE: Testing the Limits on Trade Secrets; Kodak Lawsuit Is Likely to Have

Broad Impact on Use of Confidential Data

BYLINE: Mike Mills, Washington Post Staff Writer

BODY:

**************

Experts in trade secrets law say the civil case against 3M and Imation raises

serious questions that affect most every type of business: How far can a

consultant legally go when advising clients, without revealing confidential

information about his former employer? And how liable is the client that buys

the expertise of an outside consultant, if that consultant conveys information

purloined from a previous employer?

Those questions take on new resonance in today's information-based economy.

Corporate spies had to work harder in the old days, spending nights at the copy

machine and smuggling documents past security guards. Today any employee can

give away the company store merely by hitting the "send" key on a desktop

computer.

"We're creating valuable information much faster with the computer revolution

than we ever did before, and the ease with which theft can occur is much greater

now," said Mark Halligan, a Chicago lawyer who specializes in trade secrets

law.

Lawsuits alleging theft of trade secrets have risen dramatically in recent

years, fueled mostly by a 1996 law that imposes steep penalties for "economic

espionage" committed here or abroad. There were only 18 lawsuits filed and four

mentions of the phrase "trade secrets" in the Nexis electronic database of

news articles in 1970, according to Halligan. In 1996, there were 220 reported

cases and 4,303 citations of "trade secrets," he said.

Halligan said companies accusing employees or rivals of stealing secrets need

to prove at least three things: that the information had been truly secret,

unknown outside the company gates; that adequate steps had been taken to protect

the information; and that the recipient of the information "knew, or should have

known" that it was getting a trade secret.

He said 3M likely will argue that the law is murkier when it comes to

prosecuting companies that get stolen information from a third party without

soliciting it.

"If the former employee or the consultant that has a confidentiality

obligation to a former employer or client, and discloses it to a third party,

the breach of duty lies with the consultant or employee, not the third party. I

would expect that to be their defense," Halligan said. "Eastman Kodak is suing a

company that has very well-developed policies for protection of their own trade

secrets. They're setting the stage for a major battle."

International Herald Tribune (Neuilly-sur-Seine, France)

December 10, 1997, Wednesday

SECTION: Finance; Pg. 13

LENGTH: 1019 words

HEADLINE: Kodak Wields Law on Trade Secrets

BYLINE: By Mike Mills; Washington Post Service

DATELINE: WASHINGTON

Experts in trade-secrets law said the civil case against 3M and Imation raises

serious questions that affect most every type of business: How far can a

consultant legally go when advising clients, without revealing confidential

information about his former employer? And how liable is the client that buys

the expertise of an outside consultant, if that consultant conveys information

purloined from a previous employer? Those questions take on new resonance in

today's information-based economy. Corporate spies had to work harder in the old

days, spending nights at the copy machine and smuggling documents past security

guards. Now any employee can give away the company store merely by hitting the

''send'' key on a desktop computer. ''We're creating valuable information much

faster with the computer revolution than we ever did before, and the ease with

which theft can occur is much greater now,'' said Mark Halligan, a lawyer who

specializes in trade secrets law.

Calgary Herald

December 10, 1997, Wednesday, FINAL EDITION

SECTION: BUSINESS; Pg. E7

LENGTH: 459 words

HEADLINE: Kodak sues 3M over trade secrets

BYLINE: MIKE MILLS, THE WASHINGTON POST

Experts in trade secrets law say the civil case against 3M and Imation raises

serious questions that affect most every type of business: How far can a

consultant legally go when advising clients, without revealing confidential

information about his former employer? How liable is the client that buys the

expertise of an outside consultant, if that consultant conveys information

purloined from a previous employer?

Those questions take on new resonance in today's information-based economy.

Any employee can give away the company store merely by hitting the "send" key on

a desktop computer.

"We're creating valuable information much faster with the computer revolution

than we ever did before, and the ease with which theft can occur is much greater

now," said Mark Halligan, a Chicago lawyer who specializes in trade secrets

law.

Lawsuits alleging theft of trade secrets have risen dramatically in recent

years, fueled mostly by a 1996 law that imposes steep penalties for "economic

espionage." There were only 18 lawsuits filed and four mentions of the phrase

"trade secrets" in the Nexis electronic database of news articles in 1970,

according to Halligan. In 1996, there were 220 reported cases and 4,303

citations of "trade secrets," he said.

The National Law Journal

July 28, 1997

SECTION: Pg. A1

LENGTH: 2240 words

HEADLINE: New Spy Act To Boost White-Collar Defense Biz

BYLINE: BY VICTORIA SLIND-FLOR, NATIONAL LAW JOURNAL STAFF REPORTER

BODY:

... lawyers and that a growing amount of their time may be spent with

high-tech companies as a result of this new law.

R. Mark Halligan, a partner at Chicago's Welsh & Katz Ltd., agrees: "This

thing is really hopping."

Mr. Halligan, who has a trade secrets home page on the Internet at

(http://tradesecretshomepage.com), says he has seen an exponential increase in

interest in trade secrets disputes of all kinds in recent years. Recently

running an Internet search, he found only four trade secret-related stories that

ran in 1970. In 1980, he found 166 stories, but in 1996, the number had jumped

to 3,067.

Prosecutorial Discretion

The first cases prosecuted under the new statute will be chosen for the

blatancy of the theft and the potential ease of conviction. "The government

will take only the lay-down cases where there is no question that they're going

to win," Mr. Halligan predicts.

***********************************************

Mr. Halligan says that while trade secrets lawyers do not want any legislation that would pre-empt the uniform trade secrets act, which is the standard for most states' versions, there is a need for federal legislation.

"Time is of the essence in trade secrets cases, so we find that state court

judges are well-suited on a Friday afternoon at 2 p.m. to issue a temporary

restraining order," he says. "But we will like being able to maneuver between

state and federal court."

USA TODAY

April 10, 1997, Thursday, FINAL EDITION

SECTION: MONEY; Pg. 1B

LENGTH: 1177 words

HEADLINE: KEEPING SECRETS High-tech tools usher in Stolen-Information Age

BYLINE: Micheline Maynard; Del Jones

BODY:

Dow Chemical is the latest company to realize that what�s in an employee�s head may be more valuable than anything stored in a computer, stashed in a briefcase or sitting on a desk.

And that even a junior-level engineer�s departure has the potential to hurt you.

"Any person at any level of any company can exploit the trade secrets of a company," says Chicago lawyer and law professor R. Mark Halligan. "Once a trade secret is out, it�s gone forever."

THE NATIONAL LAW JOURNAL

March 10, 1997

SECTION: NEW ACCOUNTS; Pg. B2

LENGTH: 175 words

HEADLINE: Trade Secrets Litigation

BODY:

The suit charges Visa with hiring seven Deluxe computer programmers�who developed software used for automatic-teller machines and point of sale terminals�in order to obtain trade secrets. A temporary restraining order against the workers was lifted Feb. 24, although the lifting was stayed pending appeal until March 18. Deluxe is a Milwaukee subsidiary of Minneapolis Deluxe Corp. Handling the suit is Kay Collyer partner Nancy J. Felsten and associate Marni Beck, Godfrey & Kahn partner Michael Ash and associate Sarah Ludwick and Welsh & Katz partner R. Mark Halligan. Representing Visa are Farella Braun partners Douglas R. Young and Mark D. Petersen and Quarles & Brady partners Richard C. Ninneman and Daniel E. Conley, along with associate Katherine H. Grebe.

MILWAUKEE JOURNAL SENTINEL

Milwaukee Journal Sentinel

March 2, 1997 Sunday All

SECTION: Business Pg. 1

LENGTH: 1411 words

HEADLINE: In high-tech era, trade secrets a growth industry

Criminal, civil law trying to cope with issue

BYLINE: CARY SPIVAK

SOURCE: Journal Sentinel staff

BODY:

Ever since man invented the wheel, some other guy has probably been trying to steal the idea.

For centuries, employers have been fighting to keep secret the tricks of

their trades. Often these efforts have run smack into the interests of

The Milwaukee Journal Sentinel March 3, 1997

employees looking to boost their careers and salaries by changing jobs. English common law dealing with trade secrets dates back to the Industrial Revolution.

"The law really hasn�t changed," said R. Mark Halligan, a Chicago trade secrets lawyer. "An employee is not authorized to employ, or use, his former employer�s trade secrets."

PR Newswire

January 28, 1997, Tuesday

SECTION: Financial News

DISTRIBUTION: TO BUSINESS EDITOR

LENGTH: 538 words

HEADLINE: EEA Impact on Global Competitive Intelligence for Business

DATELINE: ALEXANDRIA, Va., Jan. 28

BODY:

Discover what "proprietary trade secrets" are under the Act, and learn how conduct that was formerly legal could now bring a felony conviction. Ask panelists what the authors and enforcers of the Act, experts in trade secrets law, and corporate security chiefs have to say about such a broad, yet vague, piece of legislation. Understand how courts will adjudicate the Act.

Realize the impact of the EEA on competitive intelligence and counter-intelligence practice. Over 30 experts will be present to address these issues.

The experts include: William Boni, Amgen, Inc.; Victoria Bassetti, lead legislative counsel for the EEA; Thomas Brunner, Esq., Wiley, Rein & Fielding; James Christy, President�s Infrastructure Protection Task Force; R. Mark Halligan, Esq., Welsh & Katz; Mark Hilbrun, Esq., Managing Principal and lead litigation partner of The Chandler Law Firm; Peter Kalitka, Delta Four Associates Inc.; Hamilton Loeb, Esq., Paul, Hastings, Janofsky & Walker;

John McClurg, FBI; Edward J. O�Malley, O�Malley & Associates, former Assistant Director, FBI Foreign Counterintelligence program; James Pooley, Esq., Fish & Richardson; Winn Schwartau, Interpact, Inc., author of "Information Warfare"; Peter Schweizer, author of "Friendly Spies"; Peter Toren, Chief Litigator, Intellectual Property Section, U.S. Justice Department; Larry Watson, FBI, manager of the ANSIR program; R. Patrick Watson, Director, Worldwide Security, Eastman Kodak Company; and Ira Winkler, National Computer Security Association.

Monday�s luncheon address will be presented by Oleg D. Kalugin, Chairman of Intercon International USA, former KGB Major General, and author of "The First Directorate: My 32 Years of Espionage Against the West."

Established in 1986, SCIP is a professional global society dedicated to fostering the development of CI techniques and ethical standards in the international business community. With more than 4,700 members from 44 countries world-wide, SCIP represents individuals employed by corporations, universities, and consulting firms from around the world, who collect, manage, and analyze information on competitive strategy.

The Intellectual Property Strategist

a Division of The New York Law Publishing Company

January 1997

SECTION: Pg. 8

LENGTH: 822 words

HEADLINE: How Technology Escrow Accounts Can Protect Computer Software

BYLINE: BY R. MARK HALLIGAN AND ADELE REVELLA; R. Mark Halligan is a principal in the Chicago law firm of Welsh & Katz, Ltd., specializing in trade secret, patent, copyright and licensing issues. He is also on the Adjunct Faculty of John Marshall Law School where he teaches Advanced Trade Secrets Law. He can be reached through the Trade Secrets Home Page at http://tradesecretshomepage.com.. Adele Revella is vice president of marketing for San Francisco-based DSI (Data Securities International), the founder of the technology escrow industry.

THE NATIONAL LAW JOURNAL

December 9, 1996

The Economic Espionage Act of 1996.

SECTION: INTELLECTUAL PROPERTY; Pg. B6

LENGTH: 2880 words

BYLINE: R. Mark Halligan; Mr. Halligan is a principal of Chicago�s Welsh & Katz Ltd. He is the sponsor of The Trade Secrets Home Page on the Internet, http://execpc.com/-mhallign. He also is on the adjunct faculty of John Marshall Law School, where he teaches advanced trade secrets law.

GANNET NEWS SERVICE

Gannett News Service

December 1, 1996, FINAL EDITION

SECTION: Pg. S12

LENGTH: 1668 words

HEADLINE: Court documents say attempts to sell Kodak secrets backfired

BYLINE: STEVE ORR; WILLIAM PATALON III; Rochester Democrat and Chronicle

DATELINE: ROCHESTER, N.Y.

BODY:

... not say exactly what technology has been stolen or identify who has it.

And Kodak will not say if or when it will take legal steps to

get the jewels back. Those steps could involve lodging a protest

with a foreign government or filing additional civil lawsuits

GANNETT NEWS SERVICE, December 1, 1996

in the United States. Kodak makes it clear it is considering all appropriate options to protect its corporate secrets.

"That�s what this case is all about," said Kodak general counsel Gary P. Van Graafeiland. "We shall see. We don�t bring lawsuits lightly."

He suggested the company still must review documents taken from Worden in May by the FBI during a court-authorized search of Worden�s Santee, S.C., home. The FBI is conducting a criminal probe of Worden�s activities but has not brought any charges.

Kodak apparently has seen some of the documents seized by the FBI, and appears to cite some of them in its civil complaint. But Van Graafeiland said the company only received permission to see everything taken from Worden after its suit was filed on Nov. 6.

Worden, 55, moved to Santee in mid-1993, a few months after retiring from Kodak.

Worden has not yet responded to Kodak�s allegations in court, and he and his lawyers have declined to comment outside the courtroom.

Kodak officials concede that some of their proprietary technology has shown up in competitors� products in the past, but say this is by far the worst industrial espionage case in which Kodak has been victimized.

Partly because of the breadth of the alleged conspiracy, the Worden matter is being watched by lawyers across the country.

"It is unusual to see a sophisticated conspiracy like this," said R. Mark Halligan, a Chicago lawyer who specializes in trade-secret cases.

Worden left Kodak in December 1992 and quickly set up shop as a consultant to photographic companies from all over the world. He made no secret of his consulting work, issuing promotional brochures and recruiting "associates" with special expertise in film-making and other areas.

A key marketing point was that network of more than 60 associates

most recently retired Kodak employees. The company�s court papers say many of those associates helped Worden gather or sell Kodak trade secrets.

Only one associate, Kurt Strobl of Webster, is named as a defendant in the lawsuit, however. Strobl, 44, who was an active Kodak employee and who had worked with Worden there, was fired by the company the day the civil suit was filed. He has declined to comment.

But several other associates insist they were not part of a criminal conspiracy. They say they were simply using their professional expertise�and were careful never to betray their former employer�s secrets.

Edward Yohon, a Kodak retiree who lives in Irondequoit, N.Y., said he did consulting work for Worden earlier this year.

"I don�t feel there was anything illegal about that," he said. "I have no idea what went on there from the point of view of documents that were supposedly stolen."

Worldwide, the photographic film business boasts only five serious competitors: Kodak and the 3M Corp. spinoff Imation Inc. of the United States, Fuji Photo Film Co. Ltd. and Konica Corp. of Japan and the Agfa division of Germany�s Bayer AG.

Kodak court documents focus a good deal on Kodak�s newest facility for making the flexible acetate base ...

Chicago Daily Law Bulletin

November 22, 1996, Friday

SECTION: Pg. 3

LENGTH: 190 words

HEADLINE: Around town

BODY:

The Intellectual Property Law Association of Chicago�s Trade Secrets and Unfair Competition Committee, and The John Marshall Law School Center for Intellectual Property Law, will present the association�s 7^th Annual Trade Secrets Seminar on Dec. 5 in room 1200 at John Marshall, 315 S. Plymouth Court.

Panelists and program topics will include: Peter J. Toren, The Economic Espionage Act of 1996;" Melvin F. Jager, Trade Secrets and the Internet;" and R. Mark Halligan, Recent Developments in Trade Secrets Law."

Texas Lawyer

September 9, 1996

SECTION: Pg. 30

LENGTH: 352 words

HEADLINE: IP RESOURCES ON THE WEB

BODY:

Texas Lawyer, September 9, 1996

Trade Secrets Homepage�http://www.seamless.com:80/trade/

Created by R. Mark Halligan of Chicago firm Welsh & Katz, this site offers basic information about trade secrets, recent case law developments, memos on trade secrets investigations and audits, foreign protection of trade secrets and a model "Confidentiality and Nondisclosure Agreement."

The Des Moines Register

March 24, 1996, Sunday

SECTION: Business Pg.1

LENGTH: 1440 words

HEADLINE: Uncle B�s battles for bagel secrets

BYLINE: Dale Kasler

SOURCE: Register Business Writer

BODY:

... sales went up 34 percent.

And now this.

According to the lawsuit, O�Rourke first visited the Uncle B�s plant in

December 1993. As a condition for being let inside, he signed a confidentiality agreement. Two months later, he was hired as plant manager and signed a non-compete clause.

"O�Rourke learned virtually all of Uncle B�s� trade secrets, including the recipes of bagels; production and packaging methods and equipment design," the lawsuit says.

When he quit last November, O�Rourke told Uncle B�s "that he had no intention of accepting employment from any competitors," the lawsuit says.

O�Rourke said he quit because Uncle B�s reneged on promises to pay him various bonuses. "I gave them a month�s notice, shook their hand, walked away, " he said. "I didn�t tell them where I was going. . . . I said it was none of their business." A few weeks later he was plant manager for Brooklyn Bagel Boys, a company he said is about twice the size of Uncle B�s.

Brooklyn Bagel�s lawyer referred questions to company executives, who didn�t return phone calls. But O�Rourke said he wonders what the big deal is. For one thing, he said most of Uncle B�s� supposed secrets are methods that O�Rourke, who�s spent 25 years with companies such as Oscar Mayer and Hebrew National, brought when he joined the Iowa company.

Besides, he said, his new employer sells frozen bagels and isn�t moving in on the never-frozen market.

"We sell ours basically as a frozen bagel. Ours are all in the frozen food counter. I don�t see a bunch of the conflict," he said.

Whether Brooklyn Bagel uses the alleged secrets or not could be irrelevant. Mark Halligan, a Chicago lawyer who specializes in such matters, said a company could be held liable "even though there hasn�t been any exploitation of the trade secrets."

And Uncle B�s believes that Brooklyn Bagel could use information allegedly stolen by O�Rourke to jump into the never-frozen bagel market. "It could help accelerate their curve to try to duplicate what we�re doing," said McClennan, Uncle B�s chief financial officer.

Perhaps. But analyst Vareka said a rival firm wouldn�t be able to create never-frozen bagels overnight, even if it possessed the Uncle B�s technology. The Iowa company has "an advantage in that they spent three years working out the bugs," he said. "They have a system that works."

Color Uncle B�s prides itself on the fact that its bagels are never frozen.

R. Mark Halligan
Partner
Nixon Peabody LLP
300 S. Riverside Plaza , 16th Floor
Chicago, Ill 60606
312-425-3900 Email / Blackberry
Download Mr. Halligan's contact information here
Visit R. Mark Halligan's Lawyer Profile on Martindale.com

ITworld.com

MOVING TO A NEW JOB?

David Essex (August 30, 2000)

[The inevitable disclosure doctrine]. "It's often misused," Halligan said. "It's often applied to an employee regardless of the circumstances. A lot of this goes on without the employee ever having been told what's a trade secret."

********

Entrepreneur Magazine (July 2000)

CIO Magazine (April 15, 2000)

Information Today April 1, 2000

Copyright 2000 The Washington Post

The Washington Post

March 18, 2000, Saturday, Final Edition

SECTION: FINANCIAL; Pg. E01

LENGTH: 1405 words

HEADLINE: In a Bind Over Non-Compete Clauses; More Workers Caught in Grip Of

Required Agreements

BYLINE: Kenneth Bredemeier , Washington Post Staff Writer

R. Mark Halligan, a Chicago lawyer specializing in trade secrets, said:

"Non-competes are very necessary when a company identifies what its competitive

advantage is. Eighty percent of employees will abide by them because they signed

them. The fact is they're abused. They're contracts of adhesion. There's no

bargaining [over the terms] and that's an abuse."

The National Law Journal

The National Post, January 25, 2000

Copyright 2000 Gannett Company, Inc.

USA TODAY

January 19, 2000, Wednesday, FINAL EDITION

SECTION: NEWS; Pg. 1A

December 20, 1999

Business Week December 6, 1999

Business Week Frontier: The Resource for Entrepreneurs and Small Business

Page F.16 Legal Means: Silent Partners

Cites http://rmarkhalligan.com

Online Extra: Here's what a sample nondisclosure form might look like.

Ragan Communications

Business Intelligence Insider

New Federal Cases Reveal EEA Risks

"The EEA clearly applies to people who are on the receiving end" of an information exchange, says Asst. U.S. Attorney Eric Klumb, who filed a case last month in U.S. District Court in Milwaukee charging a former employee of Replacement Aircraft Parts Co. (RAPCO) with violating the EEA.

COMPETITIVE INTELLIGENCE 101

CHICAGO ATIORNEY KEYNOTES COURSE ON BUSINESS INTELLIGENCE TRAINING

A one-of-a-kind seminar next week will give Chicago-area executives a chance to learn what some call the business survival skill of the new millennium: competitive intelligence gathering.

"The notion that competitive intelligence gathering is somehow illegal is a complete misnomer," says Halligan. "It doesn�t run afoul of the law unless improper means are used to gather information."

In fact, says Halligan, businesses that shy away from gathering information on competitors will not be in business for long.

"To survive in this highly competitive, information-based economy that we live in, it�s critical for businesses to know what competitors are doing," he says.

foodCompliance.com

By Keith Nunes, MEAT&POULTRY (August, 1999)

*******************

*****************

Halligan also offers some advice. "Company executives should get up every morning and ask why their company is making money," he says. "The answer is the company's greatest asset and every executive should do whatever he or she can to protect that information."

RISK DECISIONS

Information Security is More Than Computer Security

COMPUTERWORLD

Raytheon Seeks IDS of "Chatters"

BY Kathleen Ohlson

Also, some companies don't explain what falls under trade secret status, leaving employees unsure, he said. But if the employees knowingly discussed or disclosed proprietary information they weren't authorized to use, they wouldn't be "protected by trade secret status," Halligan said.

The Arkansas Democrat-Gazette, November 08, 1998

Database August 18, 1998

The Idaho Statesman

Chicago Lawyer

CHICAGO LAWYER

Rochester Democrat and Chronicle

Copyright 1998 Gannett Company, Inc.

Gannett News Service

January 12, 1998, FINAL EDITION

SECTION: Pg. ARC

LENGTH: 776 words

HEADLINE: Kodak lawsuit against 3M has makings of U.S.-Italian legal quagmire

BYLINE: STEVE ORR; Rochester Democrat and Chronicle

THE WASHINGTON POST

Copyright 1997 The Washington Post

The Washington Post

December 09, 1997, Tuesday, Final Edition

SECTION: FINANCIAL; Pg. C01

LENGTH: 1296 words

HEADLINE: Testing the Limits on Trade Secrets; Kodak Lawsuit Is Likely to Have

Broad Impact on Use of Confidential Data

BYLINE: Mike Mills, Washington Post Staff Writer

BODY:

**************

Experts in trade secrets law say the civil case against 3M and Imation raises

serious questions that affect most every type of business: How far can a

R. Mark Halligan
Partner
Nixon Peabody LLP
300 S. Riverside Plaza , 16th Floor
Chicago, Ill 60606
312-425-3900 Email / Blackberry
Download Mr. Halligan's contact information here
Visit R. Mark Halligan's Lawyer Profile on Martindale.com