[Book Review] Trade Secrets and Intellectual Property

This is a review of the second edition of the book, Trade Secrets and Intellectual Property: Policy, Theory and Comparative Analysis (Wolters Kluwer, 2025) by William van Caenegem and Luc Desaunettes-Barbero. 

The new edition is now available in
hardback and ebook.

Released a little over a decade after the first edition, this volume now boasts a second author (Desaunettes-Barbero) and a different subtitle, along with a new chapter that discusses the EU Trade Secrets Directive (2016/943), which was introduced a couple of years after the first edition was published.

The book achieves everything promised by the title, providing a clear and well-researched overview of the law, policy, and theory behind the protection of trade secrets and confidential information across multiple jurisdictions.

Contents

Chapter 1 provides the background and introduction to the book. Trade secrets occupy an awkward position in intellectual property scholarship [Merpel: much like plant variety rights], which can be partly explained by the argument that they are not IP at all. Trade secrecy is also far less harmonised internationally than patents, trade marks, and copyright. The chapter introduces some theory and policy concerns that arise from the tensions between trade secrecy law and the principles of openness, freedom of communication in democratic societies, and safeguarding the public domain. 

Chapter 2 engages with the tensions about whether trade secrets are "property". While they are often dealt with as such, the courts have been much more resistant to this view. It then outlines how this debate has manifested in economic and socio-legal theories of trade secret protection, as well as the doctrinal approach and privacy rationale. 

Chapter 3 reviews the international standards, with more attention to the TRIPS Agreement than in the previous edition. The chapter also reviews the relevant free trade agreements and the EU Trade Secrets Directive. It provides an overview of the differences and similarities across legal systems, and concludes by emphasising the role of contracts in resolving uncertainty.

Chapter 4 examines the common law approach through the lens of the English system. It provides an overview of the equitable action for breach of confidence and discusses the implementation of the EU Trade Secrets Directive.

Chapter 5 turns to the United States, where a separate right of action emerged and the law has been harmonised by the Uniform Trade Secrets Act of 1979 (USTA). This new edition discusses the operation of the more recent Defend Trade Secrets Act of 2016 (DSTA) and its impacts on the extraterritorial effect of US trade secrets law.

Chapter 6, the new chapter in this edition, focuses on the EU Trade Secrets Directive, whcih harmonises civil protection of trade secrets. The chapter is critical of the European legislators for their lack of engagement with questions about the justifications for the Directive, which had the knock-on effect of leaving grey areas and copying some aspects the approach in the US. There has been little case law since the Directive was adopted to clarify the grey areas.

Chapter 7 turns to the civilian approach under French law, which has seen a flurry of activity and debate with the implementation of the Directive in 2018 through amendments to the Code of Commerce rather than the Code of Intellectual Property. Chapter 8 then considers the German law and its delayed transposition of the Directive in 2019, which took the approach of removing trade secrecy from the general law on unfair competition and creating a separate law. The employment relationship was not harmonised by the Directive, so both chapters also consider the national law and practice regarding employees and non-compete agreements.

Trade secrecy has the biggest role of play in the employment context, but here, it intersects with labour law in complex ways that engage various public policy concerns as well as basic rights and freedoms. Therefore, Chapter 9 is devoted to the topic of trade secrets and employees, which remains entirely a matter for national law in Europe and is not expressly addressed by the USTA nor DSTA. The chapter considers the debate about reform of non-compete agreements, with particular attention to case law in Australia. Chapter 10 concludes the book with a global picture of trade secrets law.

Final Thoughts

The new edition will be a welcome, up-to-date resource for scholars and practitioners who work with trade secrets law. There is very little to criticise - although this Kat notes her disappointment that the book lacks a bibliography and case list to summarise the materials relied upon. Perhaps this will be remedied in the next edition, but in the meantime, the footnotes are thorough and certainly pull their weight. 

Details

Publisher: Wolters Kluwer

Extent: 280 pages

Format: Hardback and eBook

ISBN: 9789041186645