MVS Filewrapper® Blog: Passing Off and Taking Credit for Architectural Plans

The United States Court of Appeals for the Seventh Circuit has issued a decision in Gensler v. Strabala, overturning a district court’s ruling dismissing a complaint for trademark infringement under §43(a) of the Lanham Act.

Strabala, a former Design Director and architect for the architectural firm Gensler & Associates, formed his own design firm, 2Define Architecture.  The 2Define Architecture website stated that Strabala had designed five projects for which Gensler was the architectural firm of record. Gensler filed suit, contending that this was “reverse passing off” and violated §43(a) of the Lanham Act.  However, the district court dismissed the complaint, ruling that Strabala neither claimed that he built or sold those structures, therefore he could not have violated the statute.

Genseler appealed the dismissal to the Seventh Circuit Court of Appeals.  According to the Seventh Circuit, there are three ways in which an architect’s assertion that he designed the building could be false: “(1) the architect did not have anything to do with the project, never working on the design; (2) The architect worked on the project but overstated his role; (3) The architect worked on the project and contributed some or even all important features, but the project was so complex that no one person bore full responsibility.”  In this case, the Seventh Circuit determined that although Gensler’s complaint did not assert one of these three situations, the complaint could be interpreted to mean that big projects, such as those at issue in this case, require big teams and that Gensler insists on institutional rather than personal credit. Furthermore, the court reasoned that as both firms specialize in large projects with sophisticated clients, and such clients would not be misled by such statements, the purpose of the complaint is to conceal that an architect has left the firm.

Ultimately the court believed that Gensler's allegations were not sufficient to warrant dismissal under Rule 12(b)(6), and the district court's dismissal was not proper before the parties had joined issue on vital topics.

The full opinion is available here.

MVS Filewrapper® Blog: Should Trade Secret Misappropriation be Federalized?

The legal community (along with bipartisan legislation) has been discussing the creation of a private cause of action under federal laws for trade secret misappropriation – or trade secret theft. In light increased cyber-espionage and the apparent ease in which trade secrets can be misappropriated in the marketplace, Congress has taken an apparent interest in "strengthening" trade secret protections.

 

Currently, trade secrets are a matter of state law. This means that each state has established requirements for trade secret misappropriation. In sum, these require a finding that a trade secret holder has a "secret" with value as a result of it not being generally known by others (i.e. competitors), that the trade secret holder has taken efforts to maintain secrecy, and that the party alleged to have access or appropriated the secret used some sort of improper means. Although the precise definitions for these standards may vary among the states, there are relatively small distinctions among the states.

 

Both the House and the Senate may consider bills introduced as early as this fall to consider federalizing this cause of action. The "Defend Trade Secrets Act of 2014" ("DTSA") (S. 2267) and the "Trade Secret Protection Act of 2014" (H.R. 5233) have been introduced to create a private cause of action under the existing Economic Espionage Act of 1996.  The DTSA as drafted would authorize a trade secret owner to bring a civil cause of action in federal court for either (1) a violation of the Economic Espionage Act (which criminalized types of trade secret theft), or (2) a “misappropriation of a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce.” The Judiciary Committee has held a hearing to discuss the benefits of the federal cause of action. A few of the purported benefits of establishing federal legislation would be to grant access to federal forums (based on the subject matter instead of matters of diversity and/or supplemental jurisdiction), along with granting access to federal remedies for seizures to prevent irreparable harm caused by trade secret misappropriation.

 

As expected, there are vocal critics of such federalization, including a group of legal scholars and professors (see opposition letter at http://cyberlaw.stanford.edu/files/blogs/FINAL%20Professors%27%20Letter%20Opposing%20Trade%20Secret%20Legislation.pdf). As stakeholders continue to voice opinions (and concerns) over pending legislation, more information will be provided through Filewrapper.com.

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