California Civil Jury Instructions (CACI) (2017)

4408. Improper Means of Acquiring Trade Secret

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4408.Improper Means of Acquiring Trade Secret
Improper means of acquiring a trade secret or knowledge of a trade
secret include, but are not limited to, [theft/bribery/misrepresentation/
breach or inducing a breach of a duty to maintain secrecy/ [or]
wiretapping, electronic eavesdropping, [or] [insert other means of
espionage]].
[However, it is not improper to acquire a trade secret or knowledge of
the trade secret by [any of the following]:
[1. Independent efforts to invent or discover the information;]
[2. Reverse engineering; that is, examining or testing a product to
determine how it works, by a person who has a right to possess
the product;]
[3. Obtaining the information as a result of a license agreement with
the owner of the information;]
[4. Observing the information in public use or on public display;]
[or]
[5. Obtaining the information from published literature, such as
trade journals, reference books, the Internet, or other publicly
available sources.]]
New December 2007
Directions for Use
In the first paragraph, include only those statutory examples of “improper means”
supported by the evidence. (See Civ. Code, § 3426.1(a).) The option for
“wiretapping, eavesdropping, [or] [insert other means of espionage]” expresses the
statutory term “espionage.”
Include the optional last paragraph if any of those methods of obtaining the
information are supported by the evidence. Omit any methods that are not at issue.
If only one is at issue, omit “any of the following.”
Sources and Authority
• “Improper Means” Defined. Civil Code section 3426.1(a).
Electronic Eavesdropping. Penal Code section 630.
• “The Restatement of Torts, Section 757, Comment (f), notes: ‘A complete
catalogue of improper means is not possible,’ but Section 1(1) includes a partial
listing. Proper means include: 1. Discovery by independent invention; 2.
Discovery by “reverse engineering,” that is, by starting with the known product
and working backward to find the method by which it was developed. The
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acquisition of the known product must of course, also be by a fair and honest
means, such as purchase of the item on the open market for reverse engineering
to be lawful; 3. Discovery under a license from the owner of the trade secret; 4.
Observation of the item in public use or on public display; 5. Obtaining the
trade secret from published literature. . . . [T]he assertion that a matter is
readily ascertainable by proper means remains available as a defense to a claim
of misappropriation. Information is readily ascertainable if it is available in
trade journals, reference books, or published materials.” (Civ. Code, § 3426.1,
Legis. Comm. Comment (Senate), 1984 Addition.)
Secondary Sources
13 Witkin, Summary of California Law (10th ed. 2005) Equity, § 81(1)
3Levy et al., California Torts, Ch. 40, Fraud and Deceit and Other Business Torts,
§ 40.53[1][b] (Matthew Bender)
49 California Forms of Pleading and Practice, Ch. 565, Unfair Competition,
§ 565.103[4][b] (Matthew Bender)
Edelson & Kay, eds., Trade Secret Litigation and Protection in California (State
Bar of California 2009) § 2.01(D)
TRADE SECRETS CACI No. 4408
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