II 

113TH CONGRESS 

2D SESSION S. 2267 

To modify chapter 90 of title 18, United States Code, to provide Federal 

jurisdiction for theft of trade secrets. 

IN THE SENATE OF THE UNITED STATES 

APRIL 29, 2014 

Mr. COONS (for himself and Mr. HATCH) introduced the following bill; which 

was read twice and referred to the Committee on the Judiciary 

A BILL 

To modify chapter 90 of title 18, United States Code, to 

provide Federal jurisdiction for theft of trade secrets. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Defend Trade Secrets 

5 Act of 2014’’. 

6 SEC. 2. FEDERAL JURISDICTION FOR THEFT OF TRADE SE7 CRETS. 

8 (a) IN GENERAL.—Section 1836 of title 18, United 

9 States Code, is amended to read as follows: 


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1 ‘‘§ 1836. Civil proceedings 

2 ‘‘(a) PRIVATE CIVIL ACTIONS.— 

3 ‘‘(1) IN GENERAL.—An owner of a trade secret 

4 may bring a civil action under this subsection if the 

5 person is aggrieved by— 

6 ‘‘(A) a violation of section 1831(a) or 

7 1832(a); or 

8 ‘‘(B) a misappropriation of a trade secret 

9 that is related to a product or service used in, 

10 or intended for use in, interstate or foreign 

11 commerce. 

12 ‘‘(2) CIVIL EX PARTE ORDER FOR PRESERVA13 TION OF EVIDENCE AND SEIZURE.— 

14 ‘‘(A) IN GENERAL.—Based on an affidavit 

15 or verified complaint satisfying the require16 ments of this paragraph, the court may, upon 

17 ex parte application and if the court finds that 

18 issuing the order is necessary to prevent irrep19 arable harm, issue appropriate orders— 

20 ‘‘(i)(I) providing for the preservation 

21 of evidence in a civil action brought under 

22 paragraph (1), including by making a copy 

23 of an electronic storage medium that con24 tains the trade secret; or 

25 ‘‘(II) described in clause (i) or (ii) of 

26 paragraph (3)(A); and 


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1 ‘‘(ii) providing for the seizure of any 

2 property used, in any manner or part, to 

3 commit or facilitate the commission of a 

4 violation alleged under subparagraph (A), 

5 except that the order— 

6 ‘‘(I) may not provide for the sei7 zure of any property that is merely in8 cidental to the alleged violation unless 

9 necessary to preserve evidence; or 

10 ‘‘(II) shall provide for the seizure 

11 of any property in a manner that, to 

12 the extent possible, does not interrupt 

13 normal and legitimate business oper14 ations unrelated to the trade secret. 

15 ‘‘(B) REQUIREMENTS FOR APPLICATION

16 ORDER.—Notwithstanding rule 65 of the Fed17 eral Rules of Civil Procedure, the requirements 

18 in paragraphs (2) through (11) of section 34(d) 

19 of the Trademark Act of 1946 (15 U.S.C. 

20 1116) shall apply to any ex parte application or 

21 seizure order under subparagraph (A). Any ref22 erence in such paragraphs (2) through (11) of 

23 section 34(d) of the Trademark Act of 1946 to 

24 section 32 of such Act shall be read as ref25 erences to this section, and references to use of 


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1 a counterfeit mark in connection with the sale, 

2 offering for sale, or distribution of goods or 

3 services shall be read as references to a mis4 appropriation of a trade secret. 

5 ‘‘(3) REMEDIES.—In a civil action brought 

6 under this subsection, a court may— 

7 ‘‘(A) grant an injunction— 

8 ‘‘(i) to prevent any actual or threat9 ened violation described in paragraph (1) 

10 on such terms as the court deems reason11 able; 

12 ‘‘(ii) if determined appropriate by the 

13 court, requiring affirmative actions to be 

14 taken to protect a trade secret; and 

15 ‘‘(iii) in exceptional circumstances 

16 that render an injunction inequitable, that 

17 conditions future use upon payment of a 

18 reasonable royalty for no longer than the 

19 period of time for which use could have 

20 been prohibited; 

21 ‘‘(B) award— 

22 ‘‘(i) damages for actual loss caused by 

23 the misappropriation of a trade secret; 

24 ‘‘(ii) damages for any unjust enrich25 ment caused by the misappropriation of 


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1 the trade secret that is not addressed in 

2 computing damages for actual loss; and 

3 ‘‘(iii) in lieu of damages measured by 

4 any other methods, the damages caused by 

5 misappropriation measured by imposition 

6 of liability for a reasonable royalty for a 

7 misappropriator’s unauthorized disclosure 

8 or use of a trade secret; 

9 ‘‘(C) if the trade secret described in para10 graph (1)(B) is willfully or maliciously mis11 appropriated, award exemplary damages in an 

12 amount not more than 3 times the amount of 

13 the damages awarded under subparagraph (B); 

14 and 

15 ‘‘(D) if a claim of misappropriation is 

16 made in bad faith, a motion to terminate an in17 junction is made or opposed in bad faith, or a 

18 trade secret is willfully and maliciously mis19 appropriated, award reasonable attorney’s fees 

20 to the prevailing party. 

21 ‘‘(b) JURISDICTION.—The district courts of the 

22 United States shall have original jurisdiction of civil ac23 tions brought under this section. 

24 ‘‘(c) PERIOD OF LIMITATIONS.—A civil action under 

25 this section may not be commenced later than 5 years 


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1 after the date on which the misappropriation is discovered 

2 or by the exercise of reasonable diligence should have been 

3 discovered. For purposes of this subsection, a continuing 

4 misappropriation constitutes a single claim of misappro5 priation.’’. 

6 (b) DEFINITIONS.—Section 1839 of title 18, United 

7 States Code, is amended— 

8 (1) in paragraph (3), by striking ‘‘and’’ at the 

9 end; 

10 (2) in paragraph (4), by striking the period at 

11 the end and inserting a semicolon; and 

12 (3) by adding at the end the following: 

13 ‘‘(5) the term ‘misappropriation’ means— 

14 ‘‘(A) acquisition of a trade secret of an15 other by a person who knows or has reason to 

16 know that the trade secret was acquired by im17 proper means; or 

18 ‘‘(B) disclosure or use of a trade secret of 

19 another without express or implied consent by 

20 a person who— 

21 ‘‘(i) used improper means to acquire 

22 knowledge of the trade secret; 

23 ‘‘(ii) at the time of disclosure or use, 

24 knew or had reason to know that the 

25 knowledge of the trade secret was— 


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1 ‘‘(I) derived from or through a 

2 person who had used improper means 

3 to acquire the trade secret; 

4 ‘‘(II) acquired under circum5 stances giving rise to a duty to main6 tain the secrecy of the trade secret or 

7 limit the use of the trade secret; or 

8 ‘‘(III) derived from or through a 

9 person who owed a duty to the person 

10 seeking relief to maintain the secrecy 

11 of the trade secret or limit the use of 

12 the trade secret; or 

13 ‘‘(iii) before a material change of the 

14 position of the person, knew or had reason 

15 to know that— 

16 ‘‘(I) the trade secret was a trade 

17 secret; and 

18 ‘‘(II) knowledge of the trade se19 cret had been acquired by accident or 

20 mistake; 

21 ‘‘(6) the term ‘improper means’— 

22 ‘‘(A) includes theft, bribery, misrepresenta23 tion, breach or inducement of a breach of a 

24 duty to maintain secrecy, or espionage through 

25 electronic or other means; and 


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1 ‘‘(B) does not include reverse engineering 

2 or independent derivation; and 

3 ‘‘(7) the term ‘Trademark Act of 1946’ means 

4 the Act entitled ‘An Act to provide for the registra5 tion and protection of trademarks used in commerce, 

6 to carry out the provisions of certain international 

7 conventions, and for other purposes’, approved July 

8 5, 1946 (15 U.S.C. 1051 et seq.) (commonly re9 ferred to as the ‘Trademark Act of 1946’ or the 

10 ‘Lanham Act’).’’. 

11 (c) EXCEPTIONS TO PROHIBITION.—Section 1833 of 

12 title 18, United States Code, is amended, in the matter 

13 preceding paragraph (1), by inserting ‘‘or create a private 

14 right of action for’’ after ‘‘prohibit’’. 

15 (d) TECHNICAL AND CONFORMING AMENDMENT.— 

16 The table of sections for chapter 90 of title 18, United 

17 States Code, is amended by striking the item relating to 

18 section 1836 and inserting the following: 

‘‘1836. Civil proceedings.’’. 

19 (e) RULE OF CONSTRUCTION.—Nothing in the 

20 amendments made by this section shall be construed to 

21 modify the rule of construction under section 1838 of title 

22 18, United States Code, or to preempt any other provision 

23 of law. 

Æ 


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