Once upon a time, a trusted agent absconded with his principal’s trade secrets and confidential business information, leveraging them for pay, perks and prestige in a new position under a new principal, a direct competitor of his former master. The master, upon discovering the wreckage of deleted emails and scrubbed hard drives, initiated a “rapid, expedited, high-stakes confrontation” in the local court to stop the disloyal agent before the competitor learned her secrets or leveraged them in the marketplace.[1]

Foremost, she feared the loss of her secrets.[2] Looking to the Uniform Trade Secrets Act (UTSA), she saw that courts could enjoin actual or threatened trade secret misappropriation to mitigate a thief’s unfair commercial advantage.[3] Hopeful, the principal-turned-plaintiff heaved her forensic evidence onto the judge’s desk, announcing triumphantly, “There! He stole my secrets! Actual misappropriation! Please, stop him, or he’ll ruin me before we even litigate the case!”

Shaking his head, the judge responded, “No, this purported misappropriation is in the past. You may sue for damages, but injunctions are for preventing future harms.”[4]

Undeterred, the master tried again, “Then, he is threatening misappropriation! He took my secrets and now serves my competitor! Please, stop him!”[5]

“Slow down,” replied the judge. “Before I go enjoining anyone, can you satisfy the elements for a temporary injunction: 1) likely success on the merits, 2) irreparable harm if the injunction is denied, 3) balancing of equities and 4) public interest?[6] If you can, to a clear and convincing degree, I’ll grant your motion.”

The master narrowed her focus to the first element. “What do I need for likelihood of success on the merits?”

“You must show the trade secret’s existence, its misappropriation and its use by the defendant to your detriment.”[7]

“But I’m asking you to prevent my detriment! To my knowledge, he hasn’t used my secrets yet. That’s why I’m here, to stop him, to keep my secrets secret.”

“No, you’re quite right. I can’t enjoin him after he uses the secrets,” answered the judge. “That would make the injunction past looking. You’ve got to show that the thief is poised to continue misappropriating in the future, or the injunction would do you no good.”[8]

“So before he uses my secrets, you won’t enjoin him because I can’t show misappropriation. After he uses my secrets, you won’t enjoin him because my secret will be out anyway?” the master asked, hanging her head.

“Quite right!” responded the judge. “Motion for temporary injunction denied!”

This story plays out in reality. In AFGD v. Tri-Star Glass, an employer lost six workers to a competitor, taking confidential price and customer information with them.[9] The employer sought an injunction to stop the bleeding. However, the court found no threat of misappropriation because the competitor had neither completed its manufacturing facility nor taken the trade secret owner’s customers – yet.[10] The employer presented evidence of the theft and argued an unauthorized disclosure was inevitable given the employees’ new roles, but the court neither recognized a theory of inevitable misappropriation nor volunteered an alternative theory.[11] The employer could not obtain an injunction to prevent an initial injury.[12]

Why is it so difficult to obtain an injunction when the UTSA expressly authorizes them? Is §2 at odds with the common law? It shouldn't be since the UTSA “codifies the basic principles of common law trade secret protection” rather than revolutionizing them.[13] The UTSA’s call for enjoining “actual or threatened misappropriation” even echoes a line from the Restatement of Torts: “The defendant is committing or is threatening to commit a wrong.”[14] Still, trade secret plaintiffs struggle to satisfy the injunction factors, especially before discovery.

The last three factors – 2) irreparable harm if the injunction is denied, 3) balancing of equities and 4) public interest – are relatively easy for a credible plaintiff.[15] Courts presume the second factor because misappropriation could irreparably destroy a trade secret.[16] Often, factor three tilts in the plaintiff’s favor because an injunction that orders compliance with an existing obligation – e.g., to refrain from using or disclosing trade secrets – does no harm to the defendant.[17] Indeed, some courts use the balance of equities and associated bond amounts to tailor their injunctions, preventing unfairness to defendants.[18] Similarly, factor four weighs in the plaintiff’s favor because compliance with the law is in the public interest.[19] The trouble, then, lies with the first factor: likelihood of success on the merits.[20]

In a typical trade secret case, evidentiary support for likelihood of success on the merits falls short of the common law’s expectations. Under the common law, the court grants a temporary injunction “to prevent the defendant from doing an action that has not yet been proved to be a violation of the plaintiff’s legal rights.”[21] The action is known, but its legal significance is not. The Restatement of Torts lists examples of committing waste, passing off goods and undermining the support of land – all relatively conspicuous wrongs. In McGinnity v. Kirk, when a mortgagee motioned to enjoin a mortgagor for failing to care for a property, the overgrowth and dilapidated fence were plainly visible.[22] In Sharp v. 251st St. Landfill, when neighbors sought an injunction to prevent the construction of a landfill, the building site and construction specifications were publicly documented.[23]

Not so for trade secret thefts. Self-respecting corporate spies misappropriate their employers’ confidential information covertly. The AFGD plaintiff knew a rival had hired its employees with confidential information, but it did not know their specific use of that information. The question was not whether the defendant’s known actions would violate the plaintiff’s rights, as presumed in the Restatement of Torts, but what the defendants were doing with the plaintiff’s secrets in private. How can a plaintiff prove success on the merits of a misappropriation claim without definitive evidence of how the defendant is using the plaintiff’s information?

In some jurisdictions, they don’t have to. Under the Inevitable Disclosure Doctrine, a plaintiff can show via circumstantial evidence that the “defendant’s new employment will inevitably lead him to rely on the plaintiff's trade secrets.”[24] Other states lower the plaintiff’s burden by requiring only prima facie evidence of success on the merits.[25] But these accommodations are unavailable in Oklahoma, where the first factor dominates the temporary injunction analysis.[26] Federal courts in the 10th Circuit also require likelihood of success on the merits before granting a preliminary injunction.[27]

Then, to obtain a temporary injunction, a plaintiff may seek a lower evidentiary burden on the first factor. This is not unreasonable. Before 2016, federal courts recognized a relaxed “sliding scale” standard: If the plaintiff succeeded decisively on the other factors, then the court would grant an injunction upon finding “questions going to the merits so serious, substantial, difficult and doubtful, as to make them fair ground for litigation.”[28] However, since Winter v. National Resources Defense Council, in which the Supreme Court held the irreparable harm factor (not likelihood of success on the merits) essential, the 10th Circuit requires all four preliminary injunction factors.[29] A return to the sliding scale, or its adoption by state courts, would bring injunctive relief back into view for trade secret plaintiffs.

Alternatively, a lighter burden may be implicit under the UTSA. UTSA §2(a) says, “Actual or threatened misappropriation may be enjoined.” Misappropriation is an improper acquisition, disclosure or use of a trade secret.[30] But what distinguishes actual from threatened? First, actual/threatened cannot be synonymous with past/future. Past torts can’t be enjoined, and both actual and threatened misappropriations are enjoinable; therefore, both actual and threatened misappropriations must be ongoing or future. Second, the UTSA offers no separate basis for a claim of “threatened” trade secret misappropriation as opposed to “actual” misappropriation.[31] They are not separate torts. Third, “actual” can mean “existing in reality” or “occurring at the time,” but “threatened” means “to give signs or warning of” or “to hang over dangerously.”[32] In other words, a threatened misappropriation may cause alarm, but it needn’t materialize as a completed tort. Most likely, then, “threatened” misappropriations risk violating the plaintiff's rights without actually violating them – otherwise, they would be “actual.” Thus, arguably, UTSA §2(a) expands the courts’ authority to enjoin not only a misappropriator but also one who stops short of completing a misappropriation – that is, someone against whom a plaintiff would not succeed on the merits.[33] Hence, the statute permits injunctions apart from the first common law factor.

CONCLUSION

To succeed on a motion for a temporary injunction, a trade secret plaintiff may need an exception to the first injunction factor, likelihood of success on the merits, because evidence of the defendant’s private use or disclosure isn’t forthcoming, as with other torts. The plaintiff has at least two arguments for the exception. First, by adopting a “sliding scale,” a court could relax the first factor when it finds the other three weigh in the plaintiff’s favor. Second, the court could interpret UTSA §2(a) as authorizing injunctions even when the plaintiff would not succeed on the merits. The court can tailor its order or adjust the plaintiff’s bond to prevent unfairness to the defendant. Without some exception, a plaintiff’s task to save its stolen trade secrets may prove insurmountable.

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ABOUT THE AUTHOR

Christopher A. Shrock is an associate with GableGotwals’ intellectual property group in Tulsa. He is a member of the Institute of Electrical and Electronics Engineers, a copy editor of the Journal of Scottish Philosophy and a volunteer leader for Scouting America.

 

 

 

 

 

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ENDNOTES

[1] Yaman Desai and Michael K. Hurst, IX. Starting Out with a Bang: Seeking Injunctive Relief for Trade Secret Misappropriation, in “Mapping The Battleground: Trade Secret Misappropriation in Texas State and Federal Courts,” TX CLE Intellectual Property Law Workshop (2022). (“Trade secrets cases are often effectively won or lost within weeks of the lawsuit being filed.”).

[2] Faiveley Transp. Malmo AB v. Wabtec Corp., 559 F.3d 110, 118 (2d Cir.2009) (“Once lost, [a trade secret] is lost forever.”).

[3] E.g., Okla. Stat. tit. 78, §87(A); Uniform Trade Secrets Act (UTSA) §2(a). UTSA §2(c) authorizes mandatory injunctions – e.g., “surrender of the stolen information” – as well.

[4] Pre-Paid Legal Servs., Inc. v. Cahill, 924 F. Supp. 2d 1281, 1289 (E.D. Okla. 2013) (explaining injunctions cannot remedy past harms).

[5] According to some, a court should only issue a temporary injunction for threatened misappropriation since an injunction would be powerless to stop a past misappropriation. IP Litigation Guide: Patents & Trade Secrets

• 10:9.

[6] Restatement (Second) of Torts §936 cmt. e (1979); see, e.g., Celebrity Attractions, Inc. v. Oklahoma City Pub. Prop. Auth., No. CIV-15-1267-HE, 2016 WL 126882, at *3 (W.D. Okla. Jan. 11, 2016), aff'd, 660 F. App'x 600 (10th Cir. 2016); ProLine Prod., L.L.C. v. McBride, 2014 OK CIV APP 34, ¶3, 324 P.3d 430, 432.

[7] Micro Consulting, Inc. v. Zubeldia, 813 F. Supp. 1514, 1534 (W.D. Okla. 1990), aff'd, 959 F.2d 245 (10th Cir. 1992); see also Oklahoma Uniform Jury Instructions, Chapter 29.1.

[8] Chilcutt Direct Mktg., Inc. v. A Carroll Corp., 2010 OK CIV APP 58, ¶16, 239 P.3d 179, 183 (emphasis added).

[9] AFGD, Inc. v. Tri-Star Glass, Inc., 2005 WL 8175945 (N.D. Okla. June 7, 2005).

[10] AFGD, Inc. v. Tri-Star Glass, Inc., 2005 WL 8175945, at *4 (N.D. Okla. June 7, 2005).

[11] Id.; see also PepsiCo, Inc. v. Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995).

[12] California law exhibits a similar catch-22. There, threatened trade secret misappropriation means an “imminent” misuse manifested by a defendant’s words or conduct. Unless the thief has previously misused or disclosed the secrets, a plaintiff must prove the thief’s intent to use them, typically from the thief’s private communications. In other words, to prevent a first harm, a California plaintiff needs clear and convincing evidence that, probably, will emerge late in discovery – too late. See FLIR Sys., Inc. v. Parrish, 174 Cal. App. 4th 1270, 1279, 95 Cal. Rptr. 3d 307, 316 (2009) (citing to Cent. Valley Gen. Hosp. v. Smith, 162 Cal. App. 4th 501, 527, 75 Cal. Rptr. 3d 771, 791 (2008)); Interbake Foods, L.L.C. v. Tomasiello, 461 F. Supp. 2d 943, 973 (N.D. Iowa 2006); Del Monte Fresh Produce Co. v. Dole Food Co., 148 F. Supp. 2d 1326, 1338 (S.D. Fla. 2001) (calling for a “substantial threat of impending injury”).

[13] Prefatory Note, Uniform Trade Secrets Act with 1985 amendments. The Prefatory Note also complains that the Restatement (Second) of Torts omitted material from Restatement (First) of Torts §757, cmt. (b) (1939), which authorized injunctive relief for trade secret misappropriations.

[14] Restatement (Second) of Torts §936, cmt. e (1979).

[15] Restatement (Second) of Torts §936 cmt. e (1979); see, e.g., Celebrity Attractions, Inc. v. Oklahoma City Pub. Prop. Auth., No. CIV-15-1267-HE, 2016 WL 126882, at *3 (W.D. Okla. Jan. 11, 2016), aff'd, 660 F. App'x 600 (10th Cir. 2016); ProLine Prod., L.L.C. v. McBride, 2014 OK CIV APP 34, ¶3, 324 P.3d 430, 432.

[16] Skycam, LLC v. Bennett, 2012 WL 4483610, at *2 (N.D. Okla. Sept. 27, 2012); see also Kendall Holdings, Ltd. v. Eden Cryogenics LLC, 630 F.Supp.2d 853, 867 (S.D. Ohio 2008); Computer Assocs. Int’l v. Quest Software, Inc., 333 F.Supp.2d 688, 700 (N.D. Ill. 2004); Union Nat’l Life Ins. Co. v. Tillman, 143 F.Supp.2d 638, 641-42 (N.D. Miss. 2000); Tracer Research Corp. v. Nat’l Env’t Serv. Co., 843 F.Supp. 568, 582 (D. Ariz. 1993); Boston Scientific Corp. v. Lee, 2014 WL 194687 (D. Mass.); Software Pricing Partners, LLC v. Geisman, 2022 WL 3971292 (W.D.N.C.); Xerox Corporation v. O’Dowd, 2006 WL 3053408 (M.D. Tenn.); HCAFranchise Corporation v. Alisch, 2016 WL 10706285 (N.D. Ind.); Lumex, Inc. v. Highsmith, 919 F.Supp. 624 (E.D.N.Y.).

[17] Pre-Paid Legal Servs., Inc. v. Cahill, 924 F. Supp. 2d 1281, 1291 (E.D. Okla. 2013).

[18] See Yakus v. United States, 321 U.S. 414, 440, 64 S. Ct. 660, 675, 88 L. Ed. 834 (1944); The Sedona Conference Commentary on Equitable Remedies in Trade Secret Litigation, 23 Sedona Conf. J. 591, 700 (2022).

[19] Pre-Paid Legal Servs., Inc. v. Cahill, 924 F. Supp. 2d 1281, 1291 (E.D. Okla. 2013); see also Edwards Lifesciences Corp. v. Maximilien, 2023 WL 4680774 (C.D. Cal.); Pareto Health (AL), LLC v. WeCare TLC, LLC, 2021 WL 4860760 (N.D. Ala.); Northwood, Inc. v. Clinical Would Solutions, LLC, 2021 WL 1345574 (E.D. Mich.); Acceleration Products, Inc. v. Arikota, Inc., 2014 WL 3900875 (D. Utah).

[20] Crystal Bay Ests. Homeowners' Ass'n, Inc. v. Cox, 2022 OK CIV APP 38, ¶12, 521 P.3d 812, 817 (citing to Dowell v. Pletcher, 2013 OK 50, 304 P.3d 457, as corrected (July 15, 2013)).

[21] Restatement (Second) of Torts §936, cmt. e (1979).

[22] McGinnity v. Kirk, 2015 OK 73, 362 P.3d 186.

[23] Sharp v. 251st St. Landfill, Inc., 1991 OK 41, 810 P.2d 1270, overruled on other grounds by DuLaney v. Oklahoma State Dep't of Health, 1993 OK 113, 868 P.2d 676.

[24] PepsiCo, Inc. v. Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995).

[25] E.g., Horner Int’l Co. v. McKoy, 232 N.C. App. 559, 570, 754 S.E.2d 852, 860 (2014).

[26] Crystal Bay Ests. Homeowners' Ass'n, Inc. v. Cox, 2022 OK CIV APP 38, ¶12, 521 P.3d 812, 817 n.6 (rejecting the sliding-scale analysis and also noting the essentiality of irreparable harm) (citing to Dowell v. 

Pletcher, 2013 OK 50, 304 P.3d 457, as corrected (July 15, 2013)).

[27] Diné Citizens Against Ruining Our Env't v. Jewell, 839 F.3d 1276, 1282 (10th Cir. 2016) (abrogating the relaxed standard).

[28] E.g., Cont'l Oil Co. v. Frontier Ref. Co., 338 F.2d 780, 781-82 (10th Cir. 1964); Celebrity Attractions, Inc. v. Oklahoma City Pub. Prop. Auth., No. CIV-15-1267-HE, 2016 WL 126882, at *3 (W.D. Okla. Jan. 11, 2016) (applying the relaxed standard for likelihood of success).

[29] Diné Citizens Against Ruining Our Env't v. Jewell, 839 F.3d 1276, 1282 (10th Cir. 2016). The dissenting Judge Lucero recoiled from the majority’s “wooden” application of Winter and tried in vain to persuade his peers of the common sense of the “sliding-scale” approach, but alas, he did not prevail. For the old “sliding-scale” rule, see Star Fuel Marts, LLC v. Sam's E., Inc., 362 F.3d 639, 652 (10th Cir. 2004).

[30] UTSA §1(2).

[31] UTSA §2(a) is the only reference to threatened misappropriation in the statute.

[32] Actual, Merriam-Webster’s Dictionary, www.merriam-webster.com/dictionary/actual (last accessed June 30, 2025); Threaten, Merriam-Webster’s Dictionary, www.merriam-webster.com/dictionary/threaten (last accessed June 30, 2025).

[33] E.g., Assa Abloy Sales & Mktg. Grp., Inc. v. TASK, Fcz, 2018 WL 691711, at *7 (D. Conn. Feb. 2, 2018) (using the UTSA Sect. 2 authorization to enjoin a defendant as an alternative to the four-part test).