O.C.G.A. § 10-1-767 (2019)

Annotations

JUDICIAL DECISIONS Federal preemption. - Misappropriation claims under Georgia’s trade secrets law, O.C.G.A. Art. 27, Ch. 1, T. 10, were not preempted by the federal Copyright Act (17 U.S.C. § 101 et seq.) because the claims involved the additional element of a breach of the confidentiality that was owed to the software owner under the owner’s license agreement and common law. CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337, 1992 U.S. Dist. LEXIS 14776 (M.D. Ga. 1992). Georgia Trade Secrets Act, O.C.G.A. § 10-1-760 et seq., generally supersedes conflicting tort, restitutionary, and other laws of Georgia providing civil remedies for misappropriation of a trade secret.

Prof’l Energy Mgmt. v. Necaise, 300 Ga. App. 223, 684 S.E.2d 374, 2009 Ga. App. LEXIS 1135 (2009). Preemption of common law claims. - When a marketing company presented a packaging idea to a beverage manufacturer, requiring that the secrecy of the idea be maintained, and the manufacturer then asked another company to design a similar concept, as a result of which the marketing company sued the manufacturer, the marketing company’s conversion, breach of confidential relationship and duty of good faith, unjust enrichment, and quantum meruit claims were preempted by O.C.G.A. § 10-1-767, as the subject

matter of each of those claims was a trade secret. Penalty Kick Mgmt. v. Coca Cola Co., 318 F.3d 1284, 2003 U.S. App. LEXIS 1122 (11th Cir. 2003). In a former employer’s suit against a former employee and the new employer, the former employer’s conversion, misappropriation, unjust enrichment, quantum merit, and civil theft claims were dismissed, as O.C.G.A. § 10-1-767 was the exclusive remedy for misappropriation of trade secrets, and the other claims were based on the same facts that comprised the trade secret misappropriation claim. Opteum Fin. Servs., LLC v. Spain, 406 F. Supp. 2d 1378, 2005 U.S. Dist. LEXIS 34444 (N.D. Ga. 2005). Unpublished decision: In a case alleging misappropriation of confidential information and trade secrets, and breach of confidentiality agreements, a district court did not err in finding that the Georgia Trade Secrets Act of 1990, O.C.G.A. § 10-1-760 et seq., preempted the common law claims. FERCO Enters. v. Taylor Recycling Facility, LLC, 291 Fed. Appx. 304, 2008 U.S. App. LEXIS 18967 (11th Cir. 2008). Trial court manifestly abused the court’s discretion when the court granted equitable relief to a limited liability company (LLC) because there was no finding that the drawings a company used were trade secrets as defined by the Georgia Trade Secrets Act (GTSA), O.C.G.A. § 10-1-761, and by using O.C.G.A. § 9-5-1 to provide the LLC the same relief based on the same allegations it would have received had the drawings qualified as trade secrets, the trial court undermined the exclusivity of the GTSA; the key inquiry was whether the same factual allegations of misappropriation were being used to obtain relief outside the GTSA, and since the trial court’s award of general equitable relief under O.C.G.A. § 9-5-1 was based on the same conduct as the GTSA claim, i.e, the misappropriation of the drawings, such relief was preempted by O.C.G.A. § 10-1-767(a). Robbins v. Supermarket Equip. Sales, LLC, 290 Ga. 462, 722 S.E.2d 55, 2012 Ga. LEXIS 133 (2012). Breach of contract not preempted. - After plaintiff former employer also asserted Georgia Trade Secrets Act,

O.C.G.A. § 10-1-760 et seq., claims, its common law breach of contract claim against defendant former employee was not superseded by the Act because, under O.C.G.A. § 10-1-767(b)(1), such a claim was not superseded, and the employee did not argue that there was an absence of a factual dispute as to whether the employee breached the employee’s conflict of interest agreement. Diamond Power Int’l, Inc. v. Davidson, 540 F. Supp. 2d 1322, 2007 U.S. Dist. LEXIS 73032 (N.D. Ga. 2007). Customer base as trade secret. - Bankruptcy trustee had no action against defendants for their conversion of the debtor’s customer base because the remedies provided by the Georgia Trade Secrets Act, O.C.G.A. § 10-1-760 et seq., for misappropriation of a trade secret are exclusive. Kissner v. Inter-Continental Hotels Corp., No. 97 Civ 8400, 1999 U.S. Dist. LEXIS 1760 (S.D.N.Y. Feb. 18, 1999). Remedies under the Georgia Trade Secrets Act, O.C.G.A. § 10-1-760 et seq., for misappropriation of a debtor’s customer list were not available to a bankruptcy trustee because the debtor did not take the steps necessary to protect the debtor’s customer base as a trade secret. Kissner v. Inter-Continental Hotels Corp., No. 97 Civ 8400, 1999 U.S. Dist. LEXIS 1760 (S.D.N.Y. Feb. 18, 1999). Claim constituted tort actionable under Tort Claims Act. - Public relations firm’s claim against a state university board for misappropriation under the Trade Secrets Act, O.C.G.A. § 10-1-760 et seq., was barred by sovereign immunity; however, because a violation of the Act constituted a tort and the state waived sovereign immunity for torts, the firm could bring suit pursuant to the Tort Claims Act, O.C.G.A. § 50-21-20 et seq. Bd. of Regents of the Univ. Sys. of Ga. v. One Sixty Over Ninety, LLC, 351 Ga. App. 133, 830 S.E.2d 503, 2019 Ga. App. LEXIS 409 (2019), cert. denied, No. S19C1521, 2020 Ga. LEXIS 118 (Ga. Feb. 10, 2020). Breach of fiduciary duty claim not preempted. - Trial court erred in dismissing an employer’s claims for breach of fiduciary duty, solicitation of

SELLING/OTHER TRADE PRACTICES

customers, appropriation of tangible property, and breach of a nondisclosure agreement as preempted by the Georgia Trade Secrets Act, O.C.G.A. § 10-1-760 et seq., because these claims alleged conduct

that did come within the Act. Prof’l Energy Mgmt. v. Necaise, 300 Ga. App. 223, 684 S.E.2d 374, 2009 Ga. App. LEXIS 1135 (2009).

ARTICLE 27A BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT Law reviews. For article, “More Property Rules Than Property? The Right to Exclude in Patent and Copyright,” see 68 Emory L.J. 685 (2019).

For article, “Automation & Predictive Analytics in Patent Prosecution: USPTO Implications & Policy,” see 35 Ga. St. U.L. Rev. 1185 (2019).