Intellectual Property Law

A fertile ground for evidence and information in support of a trade secrets claim, especially in cases where employees leave a company and take trade secrets with them, has been the employee’s email. Many trade secrets cases have been proven based on the employee’s own communications via email. It has been a practice of plaintiffs to serve a subpoena on the former employee’s ISP provider, as well as the new company’s ISP provider in order to assure that all responsive emails are received–often, the former employee is not very forthcoming in producing damaging emails on their own.

However, according to this article on Law.com, that practice is meeting more resistance in the Court. More and more often ISP providers are challenging these subpoenas and the Courts are starting to rule in their favor.

According to the article, a federal court in Virginia recently relied on the Stored Communications Act of 1986 to protect the privacy of stored emails. The Virginia court ruled against disclosure of the emails based on the Act’s requirements that consent of the e-mail subscriber, the sender of the message or the recipient is needed before any emails must be produced. Obviously, no employee misappropriating confidential information is going to agree so the Act effectively would end this practice.

The article also references the California federal court case that addressed the same issue–O’Grady v. Superior Court, 44 Cal. Rptr. 3d 72 (Calif. 6th Ct. App. 2006). In O’Grady, a California appeals court prohibited computer maker Apple from obtaining e-mail contents from an ISP in a trade secrets case. The court held that such disclosure was prohibited under the SCA, absent consent from the e-mail subscriber, sender or recipient.