Weeding Out the Vague: What Gompert Teaches About Trade Secret Identification

Trade secrets occupy a unique position among the major forms of intellectual property. Patents, copyrights, and trademarks are, by design, defined and publicly registered, and can be consulted to determine exactly what is claimed. In contrast, trade secrets depend on their being undisclosed. This creates a structural problem the moment a trade secret owner goes to court. Because they are secret, they cannot be identified in public filings without destroying the very subject matter of the plaintiff’s claim. On the other hand, defendants must understand what the secrets are and what they’ve allegedly misappropriated. In addition, the court needs to know what the case is about to manage it.

An issue that is becoming more common in trade secret litigation is the degree to which the secret must be identified in the pleadings. Despite this, there is no clear guideline as to what constitutes sufficient identification, and the answer depends very much on the specific facts of the case. The most recent appellate case involving this issue is Wilbur-Ellis Co. v. Gompert, in which the U.S. Court of Appeals for the Eighth Circuit affirmed summary judgment against the plaintiff on its Defend Trade Secrets Act (DTSA) and Nevada Trade Secrets Act claims for failure to adequately identify the trade secrets concerning agricultural products that the defendants allegedly misappropriated. While this is a garden-variety trade secret case, it highlights the risk to a plaintiff who fails to adequately meet this requirement.

A Statutory Vacuum

Courts universally agree that a plaintiff must identify the trade secret it claims was misappropriated before it can proceed to discovery, let alone trial. What almost no court or statute agrees on is the degree of specificity required. At the federal level, neither the Economic Espionage Act nor the DTSA says anything explicit about identification. At the state level, only California (through Code of Civil Procedure § 2019.210) and Massachusetts have adopted statutory language that speaks directly to the requirement — and even those two differ in how specific the identification must be. Every other jurisdiction leaves the issue to case law.

This lack of statutory guidance arises as early as the pleading stage. For example, courts are split on whether discovery should be stayed until the court has ruled that the plaintiff’s identification is sufficient. However, to avoid delay, the better view seems to be that discovery should not be automatically stayed pending a Rule 16 conference or motion practice on the extent to which trade secrets must be identified before full discovery shall proceed. Other open questions concern whether the identification requires a formal, itemized disclosure (as California’s statute contemplates), or can it be satisfied through pleadings, interrogatory responses, or expert reports, and once the trade secret is identified, the degree to which the plaintiff is locked into that description, or can it be amended or refined as discovery reveals more about what the defendant actually did?

Finally, there is also the question of sufficiency or what makes an identification “enough”. At the pleading stage, plaintiffs are not required to identify their trade secrets in their complaints but still must satisfy the notice-pleading requirement in Fed. R. Civ. P. 8(a), and the rules set forth in Bell Atl. Corp. v. Twombly. This generally means that the plaintiff must allege something more than that the defendant has misappropriated “trade secrets” by simply enumerating general categories of information. Courts, however, are again split on how much more is necessary to satisfy the applicable pleading standards. The majority rule is that complaints need only allege the trade secret in general terms, while a lesser number of courts require additional details about the trade secret. The Eighth Circuit in Gombert dismissed the trade secret claims under federal and state law for failure, in part, to clearly identify the trade secrets at issue or demonstrate how they used or misused them not at the pleading stage, but on a motion for summary judgment, illustrating how a plaintiff cannot hide general and a vague identification of the trade secrets.

Gompert itself illustrates how far this can go wrong even at a later stage of the case. There, the Eighth Circuit dismissed the trade secret claims, not at the pleading stage but on summary judgment, for failure to clearly identify the trade secrets at issue or to show how they were used or misappropriated.

Gompert

Gompert arose from a familiar scenario: a company accusing former employees of taking trade secrets to a competitor. Before reaching the merits, the district court denied Wilbur-Ellis’s motion to stay resolution of the defendants’ summary judgment motion, rejecting the plaintiff’s argument that the defendants’ alleged lack of cooperation in discovery meant more time was needed. The district court then granted summary judgment against Wilbur-Ellis on its trade secret claims, holding that it had failed to come forward with sufficient admissible evidence to create a triable issue.

On appeal, Wilbur-Ellis argued that it had identified its trade secrets with the required particularity. The Eighth Circuit disagreed, adopting the district court’s characterization that the plaintiff had “painted with a broad brush, never clearly and adequately identifying the trade secrets at issue, let alone explaining how each was used or misused, or what damages were attributable to each of the four defendants individually.” The court went further, observing that much of what Wilbur-Ellis labeled a trade secret appeared, on the existing record, to be public or otherwise unprotected information.

The court specifically found that Wilbur-Ellis never identified: (1) which specific documents containing customer information were allegedly misappropriated; (2) which of the four defendants allegedly misappropriated them; (3) how the misappropriation occurred; and (4) what steps, if any, Wilbur-Ellis had taken to protect the files in question. The cumulative effect, in the court’s words, was that Wilbur-Ellis failed to rebut the district court’s concern that it was effectively treating everything the defendants encountered during their employment as a trade secret — the exact approach identification doctrine exists to prevent.

As to the one category of information Wilbur-Ellis did identify with enough specificity that it might qualify as a trade secret, the court found a second, independent failure: no evidence that the defendants had acquired or disclosed it through improper means, or without consent. In other words, even setting the identification problem aside, Wilbur-Ellis had not shown misappropriation. On both grounds, the Eighth Circuit held that summary judgment was proper.

Wilbur-Ellis primarily relied on Ahern Rentals, Inc. v. Equipmentshare.com, Inc., in which the Eighth Circuit reversed a district court’s dismissal of a trade secrets claim, holding that allegations pled on information and belief are not categorically insufficient where the proof is within the sole possession and control of the defendant. The panel in Gompert declined to extend that reasoning, for two independent reasons. First, Wilbur-Ellis had never challenged the underlying magistrate judge’s order — which required it to specify the trade secrets at issue — before the district court and so had waived the argument on appeal.

Second, and more substantively, the court distinguished Ahern on the ground that the standard for surviving a motion to dismiss (the posture Ahern addressed) is far more forgiving than the “gross abuse of discretion” standard required to overturn a discovery order (the posture at issue in Gompert). The court also noted that Wilbur-Ellis’s underlying discovery request looked less like a targeted effort to obtain evidence in the defendants’ exclusive possession and more like an attempt to compel premature third-party discovery — what the court described as a “fishing expedition.”

Gompert‘s outcome sits somewhat apart from garden-variety trade secret cases, and the opinion itself reflects the competing policy considerations that make the identification requirement genuinely contested rather than a mechanical filter. On one side, early identification promotes efficient litigation: it defines the scope of discovery, focuses the parties and the court on what is actually in dispute, and prevents a plaintiff from using the broad reach of “trade secret” allegations to conduct open-ended discovery into a competitor’s business. On the other side, courts have been careful to note that the identification requirement should not become a vehicle for denying a plaintiff its day in court — particularly given that a plaintiff often cannot know precisely how a defendant used or disclosed its information until after obtaining discovery under Fed. R. Civ. P. 26. The requirement is meant to be calibrated against its own purpose — rigorous enough to serve it, but not so exacting that it defeats otherwise legitimate claims before the plaintiff has had a fair opportunity to develop them.

Weeding Out the Vague

Gompert is something of an outlier, and its result can be partly explained by case-specific factors, including Wilbur-Ellis’s alleged discovery conduct and, critically, its failure to challenge the magistrate judge’s underlying order. But the decision nonetheless reinforces a broader and more durable point: the burden falls on the plaintiff to identify its trade secrets with “reasonable particularity.” What that phrase means will always turn on the specific facts of the case, but plaintiffs should aim to disclose enough to (1) put the defendant on notice of the nature of the claims against it, and (2) allow the defendant to assess the relevance of any discovery sought regarding its own information.

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Author: may1985
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