#本文仅代表作者观点, it does not represent the position of IPRdaily#
"The company and the legal representative both received the criminal penalty and jointly and severally compensated the victim for the economic loss of 18.84 million yuan."
After leaving the victim unit, the senior executives set up a company and recruited similar technology research and development talents of the victim unit, and used improper means to crack the technical information and trade secrets of the victim unit's products, or illegally used the victim unit's technical information and trade secrets, developed technical information, and manufactured and sold similar technology products, causing the victim unit to suffer heavy losses. The court held that regardless of whether the product was superior to the technical product of the injured unit, the company's actions constituted an infringement of trade secrets, constituted the crime of infringing on trade secrets, and should be punished as the company's legal representative and actual controller, as the person in charge directly. Where the injured unit applies for punitive damages, it shall be supported. Recently, the Zhuzhou Intermediate People's Court heard a case of infringement of trade secrets, and the company and the legal representative were both punished, and jointly and severally compensated the victim for economic losses of 18.84 million yuan.
Executives resign from their employers,
Turn around to form a company and recruit R&D talents from the original unit
"Secret research and development" technology and manufacturing and sales of similar products,
Is it legal to do so?
Who will pay for the huge losses of the enterprise?
Founded in 1992, Times Electronics Co., Ltd. is mainly engaged in control computers and software, electrical control systems for road maintenance machinery and other products, and is a holding subsidiary of CRRC Zhuzhou Research Institute Co., Ltd.
Ma Moumou joined the company in July 1999, and successively participated in and led the research and development of tamping car technology and grinding car technology, and served as the company's deputy general manager, general manager and deputy chief engineer, and his position was A2 level when he left in June 2017.
In 2018, Ma Moumou purchased a company in Changsha at a price of 50,000 yuan, became the legal representative and actual controller of the company, and successively hired Chen, Xiang, Liu, Cheng, Qi and other senior executives and technical R&D personnel of the original Times Electronics Company's large-scale railway maintenance machinery grinding car and tamping car technology, and set up a R&D team with it as the core, and developed a B19 keyboard module including tamping car control system accessories, digital input module DI (software part) of tamping car, Products including grinding truck control system (structural design and control algorithm).
According to the investigation, in the research and development process of the main products of a company in Changsha, the relevant technologies of the victim units were referred to and used to varying degrees, and the relevant technical information was not publicly known, and the technical information contained in the alleged infringing products was identical, containing a total of 9 secret points, and the value was 4.86 million yuan by an asset appraisal company.
In October 2022, Ma Moumou was arrested by the public security department on suspicion of infringing on trade secrets. In 2023, the People's Court of Tianyuan District, Zhuzhou City, will hear the case of the People's Procuratorate of Tianyuan District, Zhuzhou City, accusing the defendant Ma Moumou and the defendant of a company in Changsha with the crime of infringing trade secrets and an attached civil lawsuit in accordance with the law.
After trial, the People's Court of Tianyuan District, Zhuzhou City, held that the B19 keyboard module of the tamping vehicle control system accessories of Times Electronics Company were all technical information that was not known to the public, could bring economic benefits to the right holder, was practical, and was kept confidential by the right holder, and belonged to trade secrets. The defendant, a company in Changsha, violated its confidentiality obligations by using trade secrets in its possession, and its conduct constituted the crime of infringing on trade secrets, and the circumstances were particularly serious. Defendant Ma XX is the person in charge of a crime committed by a unit, and he should be sentenced.
In accordance with Articles 1165, 1167 and 1184 of the Civil Code of the People's Republic of China, the court supported Times Electronics Company's request to order the defendant Changsha Company to compensate for the economic losses caused by its crime of infringing trade secrets of 4.866 million yuan in accordance with the law. In addition, according to Article 1185 of the Civil Code of the People's Republic of China, "where the intellectual property rights of others are intentionally infringed and the circumstances are serious, the infringed party has the right to claim corresponding punitive damages", the court considered the defendant's attitude of admitting guilt, the degree of subjective fault, and the fact that there is still a high risk of leakage of the trade secrets involved in the case, and other factors, and determined three times as the multiple of punitive damages, that is, 13.98 million yuan.
In summary, the court ruled that the defendant company, a company in Changsha, was guilty of infringing on trade secrets in accordance with the law and sentenced to a fine of 5 million yuan; Defendant Ma XX committed the crime of infringing on trade secrets and was sentenced to four years imprisonment and a fine of 1 million yuan. The two defendants were ordered to immediately stop infringing on the trade secrets of Times Electronics Company involved in the case. The defendant Changsha company is limited to compensating Times Electronics Company with 4.86 million yuan and punitive damages of 13.98 million yuan, and the defendant Ma Moumou bears all joint and several liability for the above obligations.
The two defendants appealed, and the Zhuzhou Intermediate People's Court rejected the appeal and upheld the original judgment.
This case is the first case in Hunan to crack down on the crime of infringement of trade secrets with criminal and civil punitive damages, and the main points of dispute in the case are:
1. Whether the technical information involved in the case is a trade secret.
What is a trade secret? According to the Anti-Unfair Competition Law of the People's Republic of China and the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases of Infringement of Trade Secrets, and other relevant laws and judicial interpretations, trade secrets refer to commercial information such as technical information and business information that is not known to the public, has commercial value, and has been subject to corresponding confidentiality measures taken by the right holder. The constitutive elements of a trade secret shall be reviewed and determined from the three elements that the information was "not known to the public" at the time of the criminal act, that it had "commercial value", and that the rights holder had adopted corresponding "confidentiality measures".
In this case, the technical information asserted by Times Electronics Company was not publicly known information and was secret, with a loss value of 4.86 million yuan, which had commercial value. At the same time, the company has taken corresponding confidentiality measures for the company's software and business information with commercial value, and has taken measures to prohibit or restrict the use, access, storage, and reproduction of electronic equipment that can access and obtain trade secrets at the company's level, and requires departing employees to register, return, remove, and destroy the trade secrets and their carriers that they have contacted or obtained. continue to be obliged to maintain confidentiality. Therefore, the information involved in the case met the three elements of "not being known to the public", having "commercial value", and the right holder taking corresponding "confidentiality measures", constituting a trade secret.
2. Whether the knowledge in the brain can be a defense of non-infringement of trade secrets.
Trade secrets are not the same as patents. The disclosure of patents indicates that anyone can make improvements to the patent on the basis of the existing patent, so as to form a new technology or patent, which aims to promote the innovation of the technology, which is the meaning of patent disclosure. However, trade secrets are secretive, and as former R&D personnel, if they make improvements on the basis of trade secrets, even if a knowledge structure has been formed, and even if the final developed product or technology is superior to the original product or technology, as long as the actor uses the trade secret illegally obtained by the actor for the research and development of his new product or technology, his act constitutes an infringement of the trade secret.
Ma Moumou claimed that the research and development was carried out using the knowledge in his brain, and did not infringe on the technical secrets of a company in Changsha. The court held that trade secrets are different from patents, and the disclosure of patents indicates that anyone can improve the patent on the basis of the existing patent to form a new technology or patent, which is the meaning of patent disclosure. However, trade secrets are secretive, and as former R&D personnel, if they make improvements on the basis of trade secrets, even if a knowledge structure has been formed, and even if the final developed product or technology is superior to the original product or technology, as long as the actor uses the trade secret illegally obtained by the actor for the research and development of his new product or technology, his act constitutes an infringement of the trade secret. Moreover, the technical information developed and formed by Ma Moumou during his work at Times Electronics Company is an act of duty and has evolved into the company's technical secrets, so the legal consequences of denying his previous professional behavior on the basis that the above-mentioned technical information has been converted into his knowledge.
III. Whether the directly responsible managers in a case of a unit crime must be jointly and severally liable for punitive damages.
In cases of crimes committed by a unit, the directly responsible managers bear criminal responsibility for the unit's criminal conduct on the basis of the nature of their identity, and are generally not found to have committed a joint crime with the unit. However, in the case of incidental civil compensation, whether the directly responsible person in charge bears joint and several liability should still be judged in accordance with civil law. Article 1168 of the Civil Code of the People's Republic of China stipulates that "if two or more persons jointly commit a tortious act and cause damage to others, they shall be jointly and severally liable." ”
In this case, Ma, as the legal representative and actual controller of a company in Changsha, was the manager of Times Electronics Company, had access to the infringed trade secrets, and led the development of the relevant technical information involved in the case, forming a systematic understanding of the infringed trade secrets. After the acquisition of a company in Changsha, Ma Moumou established a clear competition goal with Times Electronics Company in the relevant technical fields involved in the case, gathered former technical personnel in the relevant fields of Times Electronics Company, developed the same or similar technical products, and played a core role in the criminal act of infringing on the trade secrets of Times Electronics Company in Changsha, such as direct leadership, theoretical framework, and technical talent combination, and his behavior was not only an act of performing his duties, but also reflected his personal will, and formed a common intention with a company in Changsha. There is a causal relationship with the occurrence of Times Electronics' losses, which meets the requirements of joint infringement, so it should be jointly and severally liable for the losses of Times Electronics.
Typical significance
This case is the first case in Hunan to crack down on a criminal case of infringement of trade secrets with civil punitive damages, which has far-reaching reference significance for the handling of similar cases. Rail transit technology is related to the competitiveness of China's high-speed rail technology in the international market, and is very important for the survival and development of China's high-speed rail technology. Punishing the infringement of trade secrets of rail transit technology in accordance with the law is an important aspect of protecting China's advanced high-speed rail manufacturing industry, as well as an important measure to maintain international core competitiveness and ensure enterprise investment, innovation and entrepreneurship. An electronics company is in a leading position in the country in rail transit technology, and also has strong competitiveness in the world, the defendant unit maliciously cracked the relevant technical information trade secrets of an electronics company, or used the technical information and trade secrets obtained by the former technical personnel of an electronics company in violation of confidentiality obligations, and developed, manufactured, and sold the same type of technical information and technical products as the victim unit, and maliciously competed, causing the victim unit to suffer heavy losses, resulting in the income and available benefits of the victim unit's trade secrets, The serious consequences of reducing the time for which competitive advantage can be maintained have constituted the crime of infringing on trade secrets under the Criminal Law. In this case, criminal sanctions were imposed on the defendant unit and the direct supervisor who improperly obtained the core technical secrets of others, and manufactured and sold similar technical products, causing significant direct losses to the right holder, and supported the civil lawsuit attached to the criminal case filed by the victim company, and imposed punitive damages on the defendant unit and its direct supervisors, which effectively protected the world's leading rail transit-related technology of the right holder and escorted the development of new quality productivity.
(Original title: Infringement of the trade secrets of the former owner after the resignation of the senior executive constitutes a crime, and the court awards punitive damages!) ）
Source: Zhuzhou Intermediate Court
Author: Chen Zheng
编辑:IPRdaily辛夷 校对:IPRdaily纵横君