Business secrets are increasingly valued as an innovation-driven force for corporate development. The protection of commercial secrets has always been a recognized problem in the academic and judicial practice circles. There have been many controversies about the assumption of confidentiality obligations after the expiration of the agreement’s confidentiality period.
Key introduction
1. After the confidentiality period agreed in the confidentiality agreement in judicial practice expires, the dispute over the obligation to maintain confidentiality of commercial secrets
2. Provisions on the confidentiality obligation of my country's laws
1. The agreement stipulates confidentiality obligations
2. Legal confidentiality obligations
3. After the agreed confidentiality period expires, the counterparty bears the confidentiality obligations
4. Conclusion
1. After the confidentiality period agreed in judicial practice expires, the dispute over the obligation to bear the confidentiality obligation of commercial secrets
In the case of Liu Haipeng, Li Dang, Feng Xiaojie, Zhou Zhuohuan, Beijing Zhongsou Network Technology Co., Ltd., and Shenzhen Branch of Beijing Zhongsou Network Technology Co., Ltd. [1], and the case of infringement of commercial secrets in Jinfeng Technology (Shenzhen) Co., Ltd., Chen Guoling, Chen Zhiping, Shenzhen Ouruifeng Technology Co., Ltd. and Aibi Mould Engineering Co., Ltd. [2], the court held that the "Disclosure Agreement" signed by the two parties clearly stipulates that the confidentiality period is within two years after the termination of the agreement. The confidentiality period during the trial of the case has expired, so the perpetrator has no obligation to keep the confidentiality for the commercial secrets involved. The trial of
and the two cases are subject to the legal provisions before the issuance of the "Anti-Unfair Competition Law of the People's Republic of China (2019)" (hereinafter referred to as the "Anti-Unfair Competition Law") and the "Provisions of the Supreme People's Court on Several Issues Concerning the Application of Laws in Civil Cases of Infringement of Trade Secrets" (hereinafter referred to as the "Provisions on the Application of Commercial Secrets Civil Cases").
From the judgment content of the above two cases, it can be seen that the court only reviewed the agreed confidentiality obligation. It believes that the agreement stipulates that the confidentiality period has expired means that the counterparty does not need to continue to assume the agreed confidentiality obligation, but the court did not discuss too much about whether the counterparty should bear the statutory confidentiality obligation. Since the court did not further explain that the counterparty can use the commercial secrets involved in the case freely when the agreement stipulates that the confidentiality obligation is terminated, the author believes that the court did not give a negative answer to whether the counterparty should bear the statutory confidentiality obligation after the agreed confidentiality period expires.
Based on the above two cases, the Supreme People's Court heard a dispute over technical secrets against Shijiazhuang Zexing Amino Acid Co., Ltd. and Hebei Daxiao Biotechnology Co., Ltd. [3] (hereinafter referred to as "Jundetong Chuang Case") and gave a more detailed discussion on the obligation to keep trade secrets confidentiality.
The Supreme Court believes that the confidentiality period of the technology license agreement only represents the licensor's agreement on the confidentiality obligation of the period. The expiration of the confidentiality period only means that the confidentiality obligation stipulated in the contract has terminated, but the licensee still needs to bear the statutory confidentiality obligation, and those who fail to fulfill the statutory confidentiality obligation should still bear the liability for compensation to the licensor.
At the same time, the Supreme Court emphasized that there is a competition for confidentiality obligations. It believes that the confidentiality obligations that the licensee should bear in the technology license agreement include at least specifically:
(1) No third party may be allowed to use relevant trade secrets without the consent of the licensor;
(2) In accordance with the confidentiality measures stipulated in the license agreement, relevant trade secrets should not be intentionally or negligently disclosed;
(3) The technology and relevant technical materials provided or taught by the licensor shall bear confidentiality obligations in accordance with the scope and time limit agreed in the agreement;
(4) For technologies that still need to be kept confidential beyond the scope and time limit agreed in the agreement, they shall follow the principle of honesty and trustworthiness and fulfill the accompanying obligations of confidentiality of the agreement.
In other words, the Supreme Court believes that there are many types of confidentiality obligations for commercial secrets, and these confidentiality obligations are independent of each other and do not affect each other, and even have competition and cooperation situations. The counterparty must also bear the above confidentiality obligations. If there is any infringement of commercial secrets, they must bear corresponding legal responsibilities based on the type of confidentiality obligations. The Supreme Court also believes that if the agreement stipulates that there is a confidentiality period, it should not be interpreted that after the confidentiality period expires, the assignee and the licensee can license others to use or even disclose relevant trade secrets.
Specifically in the case, the technical license agreement stipulates that the confidentiality period only represents the two parties to the confidentiality obligations of the period. It is an agreed debt, and the agreed debt cannot exclude statutory rights. As the Supreme Court said, "Disclosure of commercial secrets is an act of waive the civil rights of commercial secrets. Unless there is a clear agreement in the agreement, the disposal of the rights cannot be made by the non-rights subject." In other words, unless the right holder of the commercial secret independently decides to waive the commercial secret, after the confidentiality period of the agreement expires, even if the confidentiality obligation stipulated in the agreement is terminated, since the right holder's commercial secret still meets the statutory constituent elements, the counterparty still needs to bear the statutory confidentiality obligation .
2. Provisions on the obligation to keep trade secrets in my country's laws
As a statutory absolute right, there is no protection period for worldly rights, commercial secret rights or rights. As long as the commercial secret does not lose its secretness, it should always be protected.
Former President of the Intellectual Property Court of the Supreme People's Court and Professor Kong Xiangjun, Dean of the Kaiyuan Law School of Shanghai Jiaotong University, pointed out that the advantage of commercial secrets is that they can permanently maintain and continue to enjoy the rights under the premise that commercial secrets are not disclosed [4]. This legal theory and view has also been further reaffirmed, clarified and deepened in the judicial judgment of the Supreme People's Court. For example, in the aforementioned Jundetong case, the Supreme People's Court's judgment held that: "Because commercial secrets are automatically obtained from the date of their origin, their confidentiality period is uncertain, and as long as the commercial secret is not leaked, they are always protected by law. From this we can see that the types of confidentiality obligations for commercial secrets, in addition to the confidentiality obligations stipulated in the agreement, also have statutory confidentiality obligations, and the statutory confidentiality obligations include The confidentiality obligation of universal negative inaction in the sense of tort law also includes confidentiality obligations before, in and after the contract based on the principle of honesty and trustworthiness. "
The author will explain the legal basis for the above-mentioned commercial secret confidentiality obligations one by one:
(I) The agreement stipulates confidentiality obligations
This obligation is mainly arising from the agreement between the right holder of the trade secret and the counterparty.
Article 9, Paragraph 1, Paragraph 3 of the Anti-Unfair Competition Law: "Operators shall not commit the following acts of infringement of commercial secrets: (III) Disclosure, use or allow others to use the commercial secrets they have in violation of confidentiality obligations or violate the rights holder's requirements for keeping commercial secrets"; Article 23 of the Labor Contract Law of the People's Republic of China: Employers and workers may agree in the labor contract to protect the employer's trade secrets and confidential matters related to intellectual property rights. and Article 10, Paragraph 1 of Article 10, Paragraph 1 of the "Provisions of the Supreme People's Court on Several Issues Concerning the Application of Laws in the Trial of Civil Cases of Infringement of Commercial Secrets" (hereinafter referred to as "Provisions on Civil Cases of Infringement of Commercial Secrets"): "The people's court shall determine that the confidentiality obligations undertaken by the parties in accordance with the provisions of the law or the contract shall be considered as the confidentiality obligations referred to in Article 9, Paragraph 1 of the Anti-Unfair Competition Law."
All the above laws stipulate that the counterparty of the agreement shall assume the confidentiality obligations in accordance with the agreement. If the agreement fails to comply with the agreement and uses, disclose or allow others to use the commercial secrets of the right holder without authorization, the right holder may require him to bear the liability for breach of contract or corresponding legal liability.
In the case of Hangzhou Modian Technology Co., Ltd. and Zhou Gang infringement of commercial secrets [5], the court held that "the law does not prohibit the infringer from making advance agreements with the infringer on the method of tort liability, the amount of infringement compensation, etc. The legal attributes of this agreement can be determined as a simple calculation and determination method reached in advance by both parties regarding the losses suffered by the right holder due to infringement in the future or the benefits obtained by the infringer due to infringement. The method for determining the amount of compensation agreed by the counterparty of both parties does not conflict with the relevant provisions of the law. The plaintiff asked the defendant to pay 150,000 yuan in compensation, which complies with the agreement, and comprehensively considering the type of commercial secrets of Modian Company, the nature and circumstances of the infringement, etc., the amount is still within a reasonable scope. This court supports the plaintiff's lawsuit." It can be seen from this that if the counterparty violates the confidentiality obligation stipulated in the agreement, the right holder may require the counterparty to bear the liability for breach of contract in accordance with the agreement.
(II) Legally confidentiality obligation
The origin of this obligation is based on the further clarification of the property attributes of trade secrets by law. As mentioned above, as the object of intellectual property rights, the rights or interests of trade secrets are legal, worldly and absolute, and their content, scope and effectiveness shall not be changed or disappeared due to agreements. As long as the information complies with the law and has the components of commercial secrets, it can be protected by law.
statutory confidentiality obligations are divided into the following types:
(1) General passive inaction obligations in the sense of tort law
This obligation is based on Article 9, paragraph 1, item 2 of the Anti-Unfair Competition Law of the People's Republic of China: "Operators shall not commit the following acts of infringement of trade secrets: (2) Disclosure, use or allow others to use the means of the previous paragraph to obtain the trade secrets", and the third paragraph: "Employees of the right holder who know or should know the trade secrets," If a former employee or other unit or individual commits an illegal act listed in the first paragraph of this article and still obtains, discloses, uses or allows others to use the trade secret, it shall be deemed to be infringing on the commercial secret." Article 147, Paragraph 1 of the Company Law of the People's Republic of China: "Directors, supervisors, and senior management personnel shall abide by laws, administrative regulations and the company's articles of association, and shall have the obligation of loyalty and diligence to the company." As well as Article 10, Paragraph 1 of the Civil Cases of Infringement of Commercial Secrets, the above laws stipulate that everyone other than the right holder shall bear the obligation of confidentiality for commercial secrets.
In the case of infringement of commercial secrets by Yinwang Electroacoustic Co., Ltd., Huizhou Huite Electronic Technology Co., Ltd., etc. [6], the court held that the defendant company was founded by the former employee of the plaintiff. His behavior of using the plaintiff's trade secrets to manufacture and sell products violated Article 9, paragraph 1, paragraph 2 and paragraph 3 of the Anti-Unfair Competition Law, that is, the defendant company's behavior violated the confidentiality obligation stipulated by the law, and his behavior constituted infringement of the plaintiff's trade secrets. In other words, the confidentiality obligation is not subject to the establishment or effectiveness of the contract, nor is it exempted or extinguished upon the expiration or termination of the contract, because while the agreed confidentiality obligation exists, there is also a statutory confidentiality obligation, that is, the competitive and cooperative of the confidentiality obligation.
(2) Confidentiality obligations before, in, and after the contract based on the principle of honesty and trustworthiness
Article 501 of the Civil Code of the People's Republic of China stipulates the confidentiality obligations before the contract. "The parties shall not disclose or use improperly regardless of whether the contract is established or not; if the trade secret or information is leaked or improperly used, causing losses to the other party, they shall bear the liability for compensation."
Article 509, paragraph 2 also stipulates the confidentiality obligations in the contract, "When The parties shall follow the principle of integrity and fulfill their obligations such as notification, assistance, and confidentiality based on the nature, purpose and transaction habits of the contract. In addition, Article 558 stipulates the obligation of confidentiality after the contract. "After the termination of the creditor's rights and debts, the parties shall follow the principles of integrity and fulfill their obligations such as notification, assistance, confidentiality, and recycling of old items in accordance with the transaction habits."
In the case of Guangdong Keao Safety and Environmental Protection Engineering Co., Ltd. and Li Zhanzhong's restriction dispute [7], the court held that although the labor agreement between the plaintiff and the defendant had been terminated, the defendant still had the legal obligation to keep the plaintiff's trade secret in accordance with the "Disclosure Agreement" and "Restriction of Compete Agreement" signed by both parties. Even if the two agreements are not available, in view of the premise that there is a labor relationship between the plaintiff and the defendant, keeping commercial secrets is also the worker's post-agreed obligation. Therefore, the plaintiff claims that the defendant continue to fulfill the confidentiality obligations stipulated in the "Disclosure Agreement" and shall not use or disclose the plaintiff's customer list and customer information to others in accordance with the law.
To sum up, confidentiality obligations not only come from the agreement, but also have statutory confidentiality obligations.The agreed confidentiality obligation is bound by the counterparty of the agreement. According to Article 509, paragraph 1 of the Civil Code, the counterparty of the agreement shall fully perform their obligations in accordance with the agreement, that is, the counterparty of the agreement shall assume the agreed confidentiality obligations in accordance with the contents of the agreement (even if the agreed confidential information may be greater than the scope of commercial secrets) and the method. The statutory confidentiality obligation is directly granted to the right holder by law. The existence of the statutory confidentiality obligation is not subject to the establishment or effectiveness of the agreement, nor is it extinguished by the expiration or termination of the agreement. As a statutory right, there is no limit on the protection period for the rights or rights of commercial secrets. As long as the commercial secret does not lose its secretness, it will be protected by . [8]
In addition to this, as mentioned above, it is particularly worth noting that the agreement and the statutory confidentiality obligation do not exist independently, and the counterparty needs to bear multiple types of confidentiality obligations at the same time. During the agreed confidentiality period, the counterparty bears dual responsibility for the commercial secret, that is, the counterparty has an agreed confidentiality obligation for the confidential information stipulated in the agreement, and a statutory confidentiality obligation for the commercial information that meets the constituent elements of the statutory commercial secret.
Further, the confidentiality period agreed in the agreement is only for the confidentiality obligation agreed in the agreement, and cannot be interpreted as the statutory confidentiality obligation does not exist within the confidentiality period agreed in the agreement, and it cannot be interpreted as the counterparty can freely use or even disclose the commercial secrets of the right holder after the agreed confidentiality period expires. Or it can also be understood that the agreement on the confidentiality period in the agreement does not mean that the right holder has waived the relevant rights of his trade secret after the confidentiality period expires. Due to the absolute right attribute of the rights and interests of commercial secrets, in addition to the agreed confidentiality obligations within the confidentiality period, all other persons who have learned of the commercial secrets also have a statutory confidentiality obligation; even after the confidentiality period expires, the counterparty still needs to assume confidentiality obligations for commercial secrets that exceed the scope and period of the agreement.
Therefore, during the confidentiality period of the agreement, there is a situation where the agreement is subject to conflict with the statutory confidentiality obligation. When the counterparty infringes on commercial secrets, according to Article 186 of the Civil Code, "If the counterparty breach of contract and damages the other party's personal rights and property rights, the injured party has the right to choose to request it to bear the breach of contract or tort liability." The right holder of the commercial secrets may choose to request the counterparty to bear the breach of contract or tort liability. In other words, within the agreed confidentiality period, the right holder may require the counterparty who violates the confidentiality obligation to bear the breach of contract or tort liability, and after the confidentiality period expires, the right holder may require the infringer to bear the tort liability .
3. After the agreed confidentiality period expires, the counterparty shall bear the confidentiality obligation
"Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Laws in the Trial of Unfair Competition Civil Cases (2007)" Article 16 stipulates that "When the people's court judges the civil liability for stopping the infringement of commercial secrets, the time for stopping the infringement will generally last until the commercial secret has been known to the public."
"Regulations on the Protection of Technical Secrets of Enterprises in Shenzhen Special Economic Zone" also stipulates that "the confidentiality period is the expiration of the technical secret. During the confidentiality period, employees and business related persons have the obligation to keep confidentiality, except when the technical secret has been disclosed or otherwise agreed."
"Time and Commercial Secrets for Confidentiality Obligation" The view that the duration of confidentiality is consistent has also been confirmed and supported by judicial judgments. For example, Article 4.2 of the "Guidelines for the Trial of Civil Disputes of Infringement of Commercial Secrets in Jiangsu Province" stipulates that "When liability for infringement of commercial secrets is applied to infringement of commercial secrets, the time for cessation of infringement of commercial secrets should generally last until the commercial secret is known to the public."
"Several Guidance Opinions on the Trial of Commercial Secret Infringement Disputes Cases in Henan Province (Trial)" also stipulates that "employees who have contacted and understood the commercial secrets of the unit have not signed a confidentiality agreement with the original unit during their tenure and after resignation, they should still have a confidentiality obligation to the commercial secrets of the unit they know. The time for maintaining the confidentiality obligation of employees should generally be during the employee's tenure and after resignation until the unit's commercial secrets expire.The confidentiality agreement stipulates the employee's confidentiality period or the unit should pay corresponding remuneration for the employee's confidentiality obligation, etc., which are generally agreed upon. ”
The above guidance fully reflects the court's trial trend and opinions. From this we can see that the protection period of commercial secrets is not affected by the confidentiality period of the agreement, and the confidentiality obligation is not affected by the confidentiality period of the agreement, and the confidentiality obligation is also until the trade secret no longer meets the statutory constituent elements.
To sum up, after the confidentiality period of the agreement expires, when judging whether the counterparty should still assume the confidentiality obligation, it should be judged whether the trade secret still meets the statutory requirements. If the statutory requirements are not met, the counterparty's confidentiality obligation will be terminated. The author summarizes existing cases and believes that after judging whether the counterparty should assume the confidentiality obligation The following situations should be considered:
First of all, the right holder of the trade secret should ensure that after the confidentiality period agreed in the agreement expires, effective confidentiality measures still exist.
In the case of infringement of commercial secrets between Shanghai Yongyi Biotechnology Co., Ltd. [9], the "Commission Agreement" signed by Yongyi Company and Zhu Weiwei and Zhu Weiwei stipulated confidentiality terms, but the "Commission Agreement" does not restrict the business transactions between Zhu Weiwei and the client company after the expiration of the agreement, and Yongyi Company only takes confidentiality measures to sign the confidentiality terms, which means that after the expiration of the agreement, Commercial secrets no longer have confidentiality measures, and the business information involved in the case no longer meets the constituent elements of the commercial secrets for Yongyi Company. Therefore, the court did not support Yongyi Company's appeal.
From this we can see that although signing confidentiality is a common confidentiality measure taken by the right holder, signing only a confidentiality agreement may not meet the confidentiality requirements. In this case, except for the confidentiality clauses in the agreement, the right holder did not take other confidentiality measures to keep the commercial information confidential. After the agreement stipulates that after the confidentiality period expires, if the commercial secret no longer meets the statutory constituent elements, the counterparty's statutory confidentiality obligation will be terminated.
Secondly, after the confidentiality period expires, the People only have the obligation to keep confidentiality about information that meets the requirements of commercial secrets, and workers do not need to have confidentiality obligations for mastering and accumulating knowledge, experience and skills related to the work they are engaged in during their work. .
The judicial policies and judgments of the Supreme People's Court also clearly distinguish between commercial secrets and general knowledge, experience and skills. Article 3, 11 of the "Opinions of the Supreme People's Court on Several Issues Concerning the Service of the Overall Situation of Intellectual Property Trial under the Current Economic Situation" stipulates, "Properly handle the relationship between protecting commercial secrets and free career choices, restrictions on competition among confidential persons and reasonable flow of talents, and safeguard the legitimate rights and interests of workers in legitimate employment and entrepreneurship. ”
Specifically in the employment relationship, during the employment period, the scope of confidential information that employees are not allowed to disclose and use may be wider than the scope of protection for commercial secrets, but after the employment relationship is over, the scope of confidentiality obligations tend to be the same as the scope of protection for commercial secrets. In the unfair competition dispute case between Shandong Food Import and Export Company, Shandong Shanfu Group Co., Ltd., Shandong Shanfuri Water Co., Ltd. and Motor Qingqing, Qingdao Shengke Dacheng Trading Co., Ltd. [10], the Supreme Court believes that "as workers with learning ability, employees will inevitably master and accumulate knowledge, experience and skills related to the work they are engaged in during the work of the enterprise. Except for the situation where the business secrets belong to the unit, these knowledge, experience and skills constitute a component of the employee's personality and are the basis of their ability to survive and work. After leaving the company, employees have the freedom to independently use their own knowledge, experience and skills. If they win customers' trust and form competitive advantages by using their own knowledge, experience and skills, they do not violate the principle of honesty and trustworthiness and recognized business ethics. ”
law sets clear constituent elements for commercial secrets. Only commercial information that meets the statutory constituent elements can be protected by law as a commercial secret. For corporate development purposes, when the right holder of the commercial secrets signs a confidentiality agreement with others, information that does not meet the statutory constituent elements of the commercial secrets may be included in the scope of confidentiality. Due to the existence of a confidentiality agreement with legal effect, the counterparty must assume the obligation of confidentiality for confidentiality in accordance with the agreement.After the agreement stipulates that the confidentiality period expires, the agreement stipulates that the confidentiality obligation is terminated. The counterparty of only needs to assume the confidentiality obligation for commercial information that meets the constituent elements of the trade secret.
Conclusion
Law sets multiple confidentiality obligations for commercial secrets, which adds an effective protection mechanism to effectively promote the flow of information in the market, so that the right holder does not need to worry about losing control of commercial secrets before and after the circulation occurs. In addition to the agreement, other persons other than the right holder also have a statutory obligation to keep the trade secrets confidential, and the assumption of each obligation does not affect each other, and there is competition and cooperation. After the confidentiality period of the agreement expires, as long as the commercial information still meets the constituent elements of the trade secret, the counterparty must assume the corresponding confidentiality obligation.
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