C3 Patent and Intellectual Property Law

Aug082011 | Steve O'Donnell

My ex-employee is using my customer list and materials!

What, if anything, can you do if an employee takes more than some pens when he leaves and starts calling your customers and using your advertising materials?

Ideally, you’ve thought this through and already have something in your employment contract that addresses these things.

What? You don’t have trade secret language in your contract? You don’t have any intellectual property language in your contract? You don’t have any contract? That’s really not that surprising, such things are usually not considered until a business gets burned. It’s like the saying goes: fool me once, shame on you; fool me twice, shame on me.

First, call your lawyer. If an ex-employee is using your client list, you have to move quickly. If it’s a trade secret (generally something of economic value that isn’t known by the public and that you’ve taken some actions to keep secret) you might be able to get an injunction.

If an ex-employee has taken your advertising materials and designs, and is using them for a competing business, you might have a couple options. It is possible that doing something like this is punishable as an unfair business practice, at least it sounds unfair. A clearer claim might be made for copyright infringement, but copyright is one of the more annoying areas of law to start kicking around in, especially if there isn’t clear ownership of the copyrights and a copyright registration in place. Chances are, if you’ve come across this post, you don’t have either.

What every employer should do if have an employment agreement in place when someone is hired that addresses these things before they happen. Ideally, contracts are also put in place between the employer and whoever designs their marketing materials, so that, if needed, a copyright claim can be more easily made against someone that misappropriates the advertising materials. Many of these issues are state-specific, so you should talk to someone licensed in whatever state you’re in.

This, like pretty much everything, is a “ounce of prevention v. pound of cure” issue. It might not be attractive to hire someone to draft these documents if your business’ greatest goal is making payroll next month, but taking care of these fairly simple things can help you continue to make payroll long after someone leaves.

Comments

Post has no comments.

---

Post a Comment

Name (optional)

Website (optional)

Email Address (optional)

Please fill in the text in the image in the box below

Your comment