CASES OF MISPLACED TECHNOLOGY
If we uncover a trade secret by accident, does the law give us a right to disclose it?
Or are we in the wrong? By Kirk Teska
SAY SOME REALLY GOOD INTEL REGARDING A CERTAIN TECHNOLOG Y FALLS IN TO YOUR LAP. You know
or at least suspect that whoever gave you the information
wasn’t supposed to. What can you do with this newly
acquired knowledge? Tell other people? Blog about it?
Cases like these are hard and sometimes force intellectual property protections into a clash with freedom
of speech protections under the First Amendment of the
By now you might have heard the story of how a prototype of Apple’s new iPhone made its way onto the
Web. Supposedly, an Apple employee forgot his prototype next-generation iPhone in a bar and it ended up
at gizmodo.com—a Web site devoted to technology.
The folks at Gizmodo tore into the iPhone, confirmed
its authenticity, and then put photographs of the phone
along with a list of its new features on the gizmodo.com
site. Apple, rather than suing, at least so far, simply asked
for the prototype phone back and Gizmodo complied.
Could Apple sue Gizmodo? For what? Would the
First Amendment protect Gizmodo? The answer to that
depends on several factors and, to a certain extent, the
particular court that hears the case.
In one earlier case, a student by the name of Robert
Lane was given secret photos, blueprints, and other
documents pertaining to Ford automobiles that had not
yet been brought to market. When Lane published these
documents on his Web site in 1998, Ford sued alleging
violations of the trade secret laws. But, a judge refused to
force Lane to take the information off his Web site. The
reason was the First Amendment’s general prohibition
against restraining speech. Sounds good for Gizmodo.
But, in another case only a year later, the First Amendment was of no help. In that case, Andrew Bunner posted
on his Web site a DVD decryption program developed by
someone else. Since Bunner knew or should have known
the DVD decryption program contained trade secrets (in
this case encryption secrets of the DVD Copy Control
Association Inc.) and since publication of the program
was not a matter of public importance, a different court
held Bunner could be required to take the program off
his Web site. This case, then, is a point in Apple’s favor.
Other previous cases would favor Gizmodo but still oth-
ers would favor Apple. Meanwhile, legal scholars debate
the correct interplay between IP protection and the First
Amendment. According to Andrew Beckerman-Rodau,
a Suffolk Law School professor who studies and writes
about these kinds of cases, “the Lane and Bunner cases
represent a conflict between the property rights protected
by trade secrets law and free speech rights.” He believes
the Lane case is an aberration and that most courts will
follow the Bunner case.
Kirk Teska is the managing partner of Iandiorio Teska & Coleman, an intellectual property law firm in Waltham, Mass. He
is the author of the book Patent Savvy for Managers.