Thursday, December 14, 2006, 12/14/2006 11:34:00 AM

The Secrets of the Sun Visor

By Todd
Mr. Burgess was a CAD operator with a history of designing sun visors for use in the automotive industry. Grupo Antolin Ingenieria, S.A. was a Spanish company interested in designing and selling sun visors (we've copied their web-link above). They hired Mr. Burgess, who in pre-hire interviews advised that he had some radical, and patentable, ideas for sun visors. As part of his hiring, Mr. Burgess signed a standard "works made for hire" agreement.

Grupo Antolin apparently put some of Mr. Burgess's ideas to good use. Mr. Burgess apparently expected a little something extra for his efforts other than his compensation. He didn't get it. He later sued, the case ended up in federal court in Michigan, and Grupo Antolin made a motion to dismiss the claims. They were dismissed. Of interest to our blog is the court's rationale for the dismissal of the trade secrets claim: "The Court has found that: While Burgess claims he made several inventions relating to sun visors while working at Lear, the record shows that from December 2001 and well into 2002, the sun visor features Burgess claims to be trade secrets were the subject of communications with Burgess and his co-workers. Burgess also made no attempt at the time of his hire to ask that the confidentiality agreement cover his inventions or in any way indicate that he had protected inventions relating to sun visors prior to working on the program [at Grupo NA]. It also appears from the e-mail correspondences that the designs for the sun visors were in a state of active development and being worked on by Burgess and others at Group SA. Burgess' only evidence of secrecy is his allegation that he kept a pencil sketch of his ideas in a safe and disclosed them only to Hanlon. This fact alone does not demonstrate reasonable efforts at secrecy under the circumstances, nor create a genuine issue of material fact as to secrecy. The design of the sun visors was being developed at Grupo SA with input from Burgess and his co-workers. Burgess' claim of secrecy is inconsistent with the work activities surrounding the development of the sun visor technology. It simply cannot be said that Burgess' alleged inventions are protected trade secrets. The record does not support a finding that Burgess maintained secrecy of his inventions, but rather shows that the inventions for the sun visors came out of a corporate development program in which Burgess was a willing participant."

SO - for all you inventors out there: make sure you sign an employment agreement that provides intellectual property protection to your pre-hire inventions and secrets. If you do not, you might end up like Mr. Burgess, an unsuccessful litigant who felt he was entitled to participate in the profits of his employer's creation but only got his wages for being a faithful servant and design participant. The case can be cited as: Burgess v. Grupo Antolin Ingenieria, S.A., 2006 WL 3542688 (E.D. Mich., December 7, 2006).

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