Business secrets and litigation: what?

 

Business secrecy is protected by material and logical measures.

Can the legal tool, the agreement or the confidentiality clause, or even the law, in addition to its organizing function, be the last resort, and if we have the means to take legal action, be the instrument a sanction of business secrecy or coercive measures? Under what conditions?

• Prove contractual fault, breach of confidentiality, resulting damage.

There may be difficulties in identifying information that should be considered confidential, and in tracing its movement.

If the contractual terms are too vague, the judge will be encouraged to interpret them in his own way. Conversely, additional precautions can render the terms of the confidentiality agreement impracticable.

We can set up a system for recording meetings, depositing them with a trusted third party, or more or less sophisticated marking of the documents or creations concerned, from the famous “confidential” stamp to geolocation and anti-copying techniques. .

With regard to the damage, how will it be assessed in the absence of an agreed fixed penalty? We can refer to the classic tools of economic theory (evaluation by costs, comparables, expected income, etc.).

The Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, (transposed into the Commercial Code Articles L151-1 et seq.) mentions:

  » all appropriate factors such as negative economic consequences, including loss of profits, suffered by the injured party, unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the non-material damage caused to the trade secret holder as a result of the unlawful acquisition, use or disclosure of the trade secret. Alternatively, the competent judicial authorities may, in appropriate cases, fix a fixed amount of damages, on the basis of elements such as, at least, the amount of royalties or duties which would have been due if the offender had requested the permission to use the trade secret in question. »

• Continue to protect secrecy in the context of litigation

To protect a business secret during legal proceedings, the aforementioned EU Directive 2016/943 provides that the judicial authorities may restrict access to the proceedings and to the proceedings, or deliver watered down versions of the documents concerned.

A preventive measure will most often consist of sequestering evidence, for example during an infringement seizure (on the basis of articles L615-5, R615-2, R615-4 of the Intellectual Property Code)(Tribunal High Court of Paris interim order of withdrawal issued on November 22, 2019 3rd chamber 3rd section No. RG 19/10783).

Thus paragraph 1 of Article R153-1 of the Commercial Code provides:

When seized on request on the basis of article 145 of the code of civil procedure or during a measure of instruction ordered on this basis, the judge may order ex officio the placement in provisional sequestration of the documents requested. in order to ensure the protection of trade secrets.

The commercial code then organizes a subtle procedure for the protection of secrecy and the limited disclosure of confidential information:

Article R153-2 of the Commercial Code:
When, pursuant to 1° of Article L. 153-1, the judge restricts access to the exhibit only to persons authorized to assist or represent the parties, he may also decide that these persons may not copy or reproduction, except with the agreement of the holder of the piece.

Article R153-2 of the Commercial Code:
When, pursuant to 1° of Article L. 153-1, the judge restricts access to the exhibit only to persons authorized to assist or represent the parties, he may also decide that these persons may not copy or reproduction, except with the agreement of the holder of the piece.

Article R153-3 of the Commercial Code:
On pain of inadmissibility, the party or third party to the proceedings who invokes the protection of business secrecy for a document whose communication or production is requested shall submit to the judge, within the time limit set by the latter:
1° The complete confidential version of this document;
2° A non-confidential version or a summary;
3° A memorandum specifying, for each piece of information or part of the document in question, the reasons which give it the character of a business secret.
The judge may hear separately the holder of the document, assisted or represented by any authorized person, and the party requesting the communication or production of this document.

Article R153-4 of the Commercial Code:
The judge decides, without a hearing, on the communication or production of the document and its terms.

Article R153-5 of the Commercial Code:
The judge refuses the communication or production of the document when it is not necessary for the resolution of the dispute.

Article R153-6 of the Commercial Code:
The judge orders the communication or production of the document in its entirety when it is necessary for the resolution of the dispute, even though it is likely to infringe business secrecy.
In the latter case, the judge designates the person or persons who may have access to the document in its integral version. When one of the parties is a legal person, he designates, after having obtained his opinion, the natural person or persons who may, in addition to the persons authorized to assist or represent the parties, have access to the document.

Article R153-7 of the Commercial Code:
When only certain elements of the document are likely to infringe business secrecy without being necessary for the resolution of the dispute, the judge orders the communication or production of the document in a non-confidential version or in the form of a summary. , in accordance with the terms it sets.

Article R153-8
When it occurs before any trial on the merits, the decision ruling on the request for communication or production of the document is subject to appeal under the conditions provided for by Article 490 or Article 496 of the Code of Civil Procedure.
The appeal period and the appeal exercised within this period are suspensive when the decision grants the request for communication or production. Provisional execution cannot be ordered.

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Protection of business secrets

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