T.P.I. -- CRIM. 11.12

T.P.I. -- CRIM. 11.12

THEFT OF TRADE SECRETS

Any person who commits the offense of theft of trade secrets is guilty of a crime.

For you to find the defendant guilty of this offense, the state must have proven beyond a reasonable doubt the existence of the following essential elements:¹

[Part A:

(1) that the defendant [stole]² [embezzled] an article representing a trade

secret;

and

(2)(a) that the defendant had the intent to deprive or withhold from the

owner thereof the control of the trade secret;

(b) that the defendant had the intent to appropriate a trade secret to

the defendant's own use or to the use of another.]

[Part B:

(1) that the defendant, without authority, made or caused to be made a

copy of an article representing a trade secret;

and

(2)(a) that the defendant had the intent to deprive or withhold from the

owner thereof the control of the trade secret;

(b) that the defendant had the intent to appropriate a trade secret to

the defendant's own use or to the use of another.]

[To "embezzle" means willfully to take, or to convert to one's own use, another's money or property, of which the person acquired possession lawfully, by reason of some office or employment or position of trust.]³

"Article" means any object, material, device, or substance or copy thereof, including any [writing] [record] [recording] [drawing] [sample] [specimen] [prototype] [model] [photograph] [micro-organism] [blueprint] [map].⁴

"Representing" means describing, depicting, containing, constituting, reflecting or recording.⁵

"Trade secret" means the whole or any portion or phrase of any scientific or technical information, design, process, procedure, formula or improvement which is secret and of value.⁶

You, as the trier of fact, may infer⁷ a trade secret to be secret when the owner thereof takes measures to prevent it from becoming available to persons other than those selected by the owner to have access thereto for limited purposes.⁸

"Intent" means that a person acts intentionally with respect to the nature of the conduct or to a result of the conduct when it is the person's conscious objective or desire to engage in the conduct or cause the result.⁹

"Copy" means any facsimile, replica, photograph or other reproduction of an article, and any note, drawing or sketch made of or from an article.¹⁰

[The trial judge should now instruct the jury with respect to fixing the value of the property obtained. See T.P.I. -- CRIM. 11.03 (Fixing value).]

FOOTNOTES

1. Tenn. Code Ann. § 39-14-138(b).

2. The trial judge may wish to use relevant portions of T.P.I. -- CRIM. 28.15

(theft of property).

3. Black's Law Dictionary (5th Ed. 1979). See also former T.P.I. -- CRIM.

28.11.

4. Tenn. Code Ann. § 39-14-138(a)(1).

5. Tenn. Code Ann. § 39-14-138(a)(3).

6. Tenn. Code Ann. § 39-14-138(a)(4).

7. The trial judge should instruct the jury with respect to inferences. See T.P.I.

-- CRIM. 42.19 (Inferences).

8. Tenn. Code Ann. § 39-14-138(a)(4).

9. Tenn. Code Ann. § 39-11-106(a)(20).

10. Tenn. Code Ann. § 39-14-138(a)(2).

COMMENTS

1. Theft of trade secrets is punished as theft under Tenn. Code Ann. § 39-14-105. Tenn. Code Ann. § 39-14-138(b). See comment to T.P.I. -- CRIM. 11.01 (theft of property).

2. Some trial judges may wish to instruct the jury on the following:

The elements to be considered in determining whether given

information is a trade secret are:

(1) the extent to which the information is known publicly;

(2) the extent to which the secret is known by employees

and others involved;

(3) the extent of measures taken to guard the secrecy of the

information;

(4) the value of the information to competitors;

(5) the amount of effort or money spent in developing the

information;

(6) the ease or difficulty with which the information could be

properly acquired or developed by others.

You must determine whether or not the particular drawings and documents involved here were in fact trade secrets. In this regard, I instruct you that a trade secret may consist of any formula, process, pattern, device or compilation of information that is used in one's business and which gives an opportunity to obtain an advantage over competitors who do not use it.

Moreover, the express labelling of drawings as "confidential" or "secret" is not necessary to make them secret. However, while absolute secrecy is not required to merit protection of a trade secret, there must be a substantial element of secrecy so that a third person would have difficulty in acquiring necessary information for manufacturing the product without resorting to the use of improper means of acquiring the secret.

The subject matter of a trade secret must be secret. Matters of public knowledge in an industry cannot be appropriated by someone as his or her secret. Matters which were originally secret lose their trade secret status when they become public knowledge or general knowledge in the industry. Matters which someone markets cannot be his or her secret.

You must determine that the defendant had the intent to deprive or withhold from the owner the control of the trade secret to the defendant's own use or to the use of another.