What choice of law rule applies to trade secrets claims? No North Carolina appellate court has answered that question, but Judge Robinson of the NC Business Court stepped into that breach in his Opinion in SciGrip v. Osae, 2018 NCBC 10.
The Plaintiff certainly didn’t like the answer, as it resulted in the dismissal of its claim for the misappropriation of its trade secrets.
Defendant Osae had worked for the Plaintiff SciGrip for years developing its adhesive products. He then left to join a competitor, Scott Bader, Inc. (SBI). SciGrip sued both Osae and SBI in 2008 (in another lawsuit) for Osae’s violation of confidentiality restrictions which he had signed while working for SciGrip. That first lawsuit was settled via a Consent Order, which specified that Osae could not disclose SciGrip’s confidential information, and that SBI could not use it.
SciGrip sued Osae again in 2013, after he had joined another company, EBS, which is also in the adhesives industry. This is the case in the Business Court. EBS had filed a provisional patent application regarding its adhesives in Europe. SciGrip alleged that the patent application contained its trade secret information and that Osae was in violation of the Consent Order.
SciGrip also sued Osae for misappropriation of trade secrets. It sued SBI as well. SBI, based in the UK, moved for summary judgment on the basis that all of the alleged misappropriation of trade secrets had occurred outside of the State of North Carolina, and that NC’s Trade Secrets Protection Act does not apply to misappropriation that occurred outside of the State. Osae had done all of his work for SBBI and EBS outside of the State of North Carolina.
The case turned on whether North Carolina’s law ought to apply to the trade secrets claim. Plaintiff argued for the "most significant relationship" test, saying the North Carolina had the most significant relationship to the events leading to the misappropriation.
Judge Robinson went with SBI’s argument, that the proper test was lex loci delicti. "Under this test, the situs of the claim is the state where the injury or harm was sustained or suffered — the state ‘where the last act occurred giving rise to [the] injury.’ Op. Par. 34.
So what was the last act causing harm to the Plaintiff? Judge Robinson said that "[m]isappropriation occurs when defendant acquires, discloses, or uses another’s trade secret without the owner’s consent or authority." Op. Par. 35.
Osae had worked for the Plaintiff in North Carolina when he acquired its trade secrets, so that would seem to be the end of the choice of law inquiry. But Judge Robinson looked to a North Carolina federal court ruling, and decisions from other federal jurisdictions holding
that the lex loci delicti ‘is not the place where the information was learned, but where the tortious act of misappropriation and use of the trade secret occurred.’ Domtar AI Inc. v. J.D. Irving, Ltd., 43 F. Supp. 3d 635, 641 (E.D.N.C. 2014)(concluding that plaintiffs could not bring a claim under North Carolina’s TSPA because defendants’ alleged misappropriation occurred in Canada); 3A Composites USA, Inc. v. United Indus., Inc., No. 5:14-CV-5147, 2015 U.S. Dist. LEXIS 122745, at *10 (W.D. Ark. Sept. 15, 2015) (applying North Carolina conflict of laws rules and following the approach taken in Domtar); Chattery Int’l, Inc. v. JoLida, Inc., No. WDQ-10-2236, 2012 U.S. Dist. LEXIS 57512, at *12−13 (D. Md. Apr. 24, 2012) (applying the lex loci delicti rule and stating that “[m]isappropriation occurs where the misappropriated information is received and used, not necessarily where it was taken or where the economic harm is felt”).
Op. Par. 35.
Under this standard, Osae’s alleged misappropriation occurred either in the United Kingdom, where he had worked at SBI’s facilities, or in Florida, where Osae had worked for EBS.
Judge Robinson ruled that Plaintiff could not bring a claim under North Carolina’s Trade Secrets Protection Act, and granted summary judgment for the Defendants.
This means that claims for violations of NC’s TSPA cannot be pursued (at least in the NC Business Court) for misappropriation occurring outside of the State. I’m already hearing gloom and doom about this decision, but Plaintiff almost immediately noticed an appeal, so we will be hearing from the NC Supreme Court on this choice of law issue. Probably next year.
And if you are outraged at Judge Robinson’s blunting of the reach of the NC TSPA, remember that "state laws may not generally operate extraterritorially." Carolina Trucks & Equip., Inc. v. Volvo Trucks of N.A., Inc., 492 F.3d 484, 489-90 (4th Cir. 2007). So there is nothing unusual about Judge Robinson’s unwillingness to extend the TSPA’s reach to conduct taking place not only outside of North Carolina, but outside of this country.