SCR-Tech LLC v. Evonik Energy Servs. LLC
North Carolina Superior Court, Mecklenburg County
December 31, 2014, Decided
08 CVS 16632
[*P1] THIS MATTER is before the Court on Defendants' Motion to Dismiss the Trade Secret Claims Based on Plaintiff's Lack of Standing or, in the Alternative, for Partial Summary Judgment ("Motion") pursuant to Rules 12(b)(1) and 56(c) of the North Carolina Rules of Civil Procedure ("Rule(s)").
Gale, Chief Judge.
[*P2] The central issue the Motion presents is whether Plaintiff SCR-Tech LLC ("SCR-Tech") has standing to pursue claims for trade secret misappropriation where it is a licensee rather than an "owner" of the proprietary technology on which the trade secret claims are presented. The issue arises because the North Carolina Trade Secrets Protection Act (the "Act") provides that ] "[t]he owner of [**2] a trade secret shall have remedy by civil action for the misappropriation of his trade secret." N.C. Gen. Stat. § 66-153 (2014) (emphasis added). ] The Act varies in this regard from the Uniform Trade Secrets Act ("Uniform Act") and the trade secret statutes of many states modeled on the Uniform Act, where the action may be brought by a "complainant." Such statutes modeled on the Uniform Act have been interpreted not to restrict an action for misappropriation to an "owner." E.g., DTM Research, LLC v. AT&T Corp., 245 F.3d 327, 332 (4th Cir. 2001) (interpreting Maryland law).
[*P3] The issue is compounded by the fact that the Act does not include any definition of "owner." No reported North Carolina case has addressed whether, in North Carolina, an exclusive licensee can bring an action for trade secret misappropriation or how the statutory term "owner" should be defined. In a footnote, the North Carolina Pattern Jury Instructions note that the Act protects trade secret owners, but then states that "[p]resumably" that includes a bona fide licensee." N.C.P.I. Civil 813.92 n.2. The Court is aware of no guiding legislative history.
[*P4] Plaintiff contends that the term "owner" should not be restricted to merely one who holds legal title, which it admits it does not, but rather that it should be more [**3] broadly read to include an exclusive licensee like itself who possesses and uses the underlying technology in a non-transitory way and, in fact, continues to develop and improve the technology. (Pl. SCR-Tech LLC's Br. Opp'n Defs.' Mot. Dismiss the Trade Secret Claims Based on Pl.'s Lack of Standing or, in Alternative, for Partial Summ. J. ("Pl. Opp'n Br.") 14.) Defendants instead contend that the North Carolina Legislature's choice to restrict actions to an owner must be strictly construed and excludes an exclusive licensee. (Br. Supp. Defs.' Mot. Dismiss Trade Secret Claims Based on Pl.'s Lack of Standing, or, in Alternative, for Partial Summ. J. ("Defs. Supp. Br.") 8-9 (citing License Agreement § 3.1).)Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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2014 NCBC 71 *; 2014 NCBC LEXIS 71 **
SCR-TECH LLC, Plaintiff, v. EVONIK ENERGY SERVICES LLC, EVONIK ENERGY SERVICES GMBH, EVONIK STEAG GMBH, HANS-ULRICH HARTENSTEIN, and BRIGITTE HARTENSTEIN, Defendants.
Prior History: SCR-Tech LLC v. Evonik Energy Servs. LLC, 2011 NCBC LEXIS 27 (2011)
trade secret, technology, License, licensee, misappropriation, present motion, court judge
Trade Secrets Law, Civil Actions, General Overview, Ownership Rights, Governments, Courts, Judicial Precedent, Civil Procedure, Subject Matter Jurisdiction, Jurisdiction Over Actions, Justiciability, Standing