Develop a prudent intellectual property policy by reading Shakespeare’s Hamlet, says judge

April 6th, 2010 by Barry Sookman Leave a reply »

Its not often that modern day courts quote William Shakespeare for guidance in developing corporate intellectual property policies. Yet, that is exactly what US District Court Judge Gibson did in a recent case involving an employee/employer dispute, an acrimonious parting of the ways, and competition in the water-oil separating business.

In a decision released last week in Highland Tank & Mfg. Co v PS International, Inc. 2010 WL 1253887 (W.D.Pa. March 30, 2010), Judge Gibson quoted from Polonius’ speech in Hamlet providing this advice:

“Polonius is not often consulted by corporations, employees, or intellectual property theorists. Nonetheless, in a remark to his son, oft-quoted in other contexts, Polonius aptly if simply summarized both a prescription for prudent action and some of the policy aims of modern intellectual property law: “Neither a borrower nor a lender be; for loan oft loses both itself and friend, And borrowing dulls the edge of husbandry. This above all: to thine own self be true, And it must follow, as the night to day, thou canst not then be false to any man.” William Shakespeare, Hamlet act 1, sc. 3. While simple, this advice resonates in the modern workplace and courtroom. Employees would do well not to borrow the protected work of their companies when leaving employment. Companies would do well to refrain from over-lending their valuable information to those less inclined to care about its protection. While lengthier and less literate that the above passage, the country’s intellectual property and business competition laws share similar ground: both seek to define moral behavior and promote self-respect and respect for the work of others. In addition, our laws aim to preserve incentives to innovate, share information, and invest in employees.

Unfortunately, a modern Polonius might find himself presenting more nuanced advice in addenda to the above pithy turn of phrase. His simple instruction to refrain from borrowing might be modernized to a longer disclosure that over-“borrowing” of certain materials or innovations may lead to legal liability. And his instruction to refrain from lending might evolve into a multi-clause document identifying the legal and strategic circumference of two opposing spheres, the wise and the unwise “lending” to employees, customers, and competitors,

While simple pithy axioms are fun, the matter before us is unfortunately complicated. It involves four disparate areas of intellectual property law: trade secrets, patent, copyright and trademarks. Moreover, it involves the factually difficult area of employee-employer relations upon hostile parting, and competitors’ efforts to vigorously compete in defined marketplaces. In short, Plaintiff Highland Tank & Mfg. Co, (“Highland Tank”) asserts four causes of action against Defendant PS International (“PSI”). Both entities compete in selling water-oil separators. Highland Tank now accuses PSI of unfair competition, patent infringement, copyright infringement and trade secret theft. PSI counterclaims for a declaratory judgment that Highland Tank’s patent is invalid.”

The actual decision involved three motions for summary judgment. Fortunately, all were denied. This gives the judge a chance to refer to other works from Shakespeare in subsequent opinions.

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