Trade Secrets
country\'s economy thrives on its trade secrets and without them the economy
would lack its competitive edge and economic value. The trade secret laws date
back to Roman law which punished a person who forced another person to reveal
secrets relating to his master’s commercial affairs. The current trade secret
laws evolved in England during the Industrial Revolution and the first reported
trade secret case in the United States was Vickery versus Welch in 1837. In 1979
the National Conference of Commissioners of Uniform State Law imposed the

Uniform Trade Secrets Act which has now been adopted by a majority of the
states. In previous years these laws have been modified to meet the needs of our
growing technological society by incorporating such things as the Invention and

Nondisclosure Agreement and intellectual property laws. Trade secret laws
protect a company’s information that is not publicly known therefore allowing
a competitive and economic edge over their competition. Intellectual property
violations fall under the trade secret laws which are used to determine if a
company or individual has compromised any information of another company or
individual. The issue of ownership of intellectual property is not only a legal
issue but also an ethical issue that engineers face in their careers. In the
case of Vermont Microsystems, Inc. (VMI) versus Autodesk, Inc. the court
determined that Autodesk violated the trade secret laws despite the warnings by

VMI. In doing this they not only compromised themselves legally and economically
but also ethically. Otto Berkes developed a Display List Driver while working
for VMI. After completing that project he took a position at Autodesk in the
fall of 1991. At that time the president of VMI sent a letter to Autodesk
warning that Autodesk should be careful because Berkes was privy to VMI’s
trade secrets. However, in March of 1992, Berkes lobbied the management of

Autodesk to include the display list driver in R12 windows. He then became
directly involved in working on the specifications for a prototype of the
display list driver. In designing this prototype he used two algorithms, the
triangle shading algorithm and the BPS algorithm, that he had developed while
working for VMI. Soon after, VMI learned Berkes was working on the development
of the display list driver for Autodesk. VMI once again warned Autodesk, via a
written notification, that they were at risk of trade secret violation. In

October 1992, Autodesk and VMI met to attempt to resolve their differences. VMI
offered to transfer all technology to Autodesk for 25.5 million dollars. After
receiving VMI’s proposal Autodesk considered proposals from other company’s
in order to replace the display list driver Berkes had developed. Autodesk
rejected all proposals including the offer made by VMI and apparently for
economic reasons decided to go ahead and ship their current version of the
display list driver despite the ethical and legal ramifications. The issue the
court had to determine was whether or not trade secret misappropriation
occurred. It was VMI’s responsibility to prove to the court that a trade
secret misappropriation had occurred. In complying with these laws, VMI
submitted evidence of eleven instances of trade secret misappropriation. The
first instance was the issue of the overall architecture. The courts felt that

VMI’s next eight instances were incorporated into that of the first instance.

In comparing Autodesk and VMI’s architecture the variables, parameters,
structures, and implementation of management functions of the two software
programs were almost, if not, identical. The add-on software that Berkes
designed, for both Autodesk and VMI, included the same functions and tools.

Everything from the management of bounding boxes to the location of entities was
identical. There were such similarities between the design of both company’s
products that the courts could not help but rule that Autodesk had violated the
trade secret laws for the first instance. The last two instances of trade secret
misappropriation were the triangle shading and BPS algorithms. The triangle
shading algorithm was so close to that of VMI’s that one expert witness
reported that "the resemblance goes right down to the names of variables,
names of macros, and even many of the comments. Another pronounced the
algorithms ‘identical’" (United State District Court for the District
of Vermont 1996, 8). Concerning the BPS algorithm, Berkes filed a counterclaim
against VMI, claiming that he was entitled to use BPS algorithm even if VMI has
the same technology. He argued that he had developed the software on his own
time and was therefore entitled to use it as he pleased. It can be argued that
an employee has the right to carry his knowledge, skills, and experience from
one employer to